Hyatt

Trademark Trial and Appeal Board

Oct 4, 2004

No. 76386380 (T.T.A.B. Oct. 4, 2004)

Mailed: October 4, 2004
Paper No. 19
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hyatt
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Serial No. 76386380
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Lenworth Alexander Hyatt, pro se.
Shaunia P. Wallace, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Simms, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Lenworth Alexander Hyatt, a citizen of Jamaica, has
filed an application to register the mark "BEAUTIQUE" for "retail
store services featuring beauty care products; [and]
merchandizing beauty supplies, designer fashions, fashion
accessories, jewelry, and footwear" in International Class 35 and
"beauty salons" in International Class 44.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to his services, so resembles the
1 Ser. No. 76386380, filed on March 22, 2002, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76386380
2
mark "BEAUTIQUE," which is registered for "eyeliner pencil and
crayons and lipliner pencil and crayons" in International Class 3
and "combs and brushes for hair" in International Class 21,2 as
to be likely to cause confusion, or to cause mistake, or to
deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods and/or services at issue and the
similarity or dissimilarity of the respective marks in their
2 Reg. No. 2,114,289, issued on November 18, 1997, which sets forth a
date of first use anywhere and in commerce of February 1993 for the
goods in International Class 3 and a date of first use anywhere and in
commerce of November 1993 for the goods in International Class 21;
combined affidavit §§8 and 15. In addition, inasmuch as the same
registrant was also the owner of a registration for the mark
"BEAUTIQUE" for "permanent hair waving lotion," namely, Reg. No.
1,265,483, which issued on January 31, 1984 and sets forth a date of
first use anywhere of January 14, 1982 and a date of first use in
commerce of January 15, 1982, registration was finally refused on the
basis thereof. However, because an application for the renewal of
such registration has not been filed within the grace period allowed
by Section 9(a) of the Trademark Act, 15 U.S.C. §1059(a), and the
registration has therefore expired, no further consideration will be
given thereto as a bar under Section 2(d) of the statute.
Ser. No. 76386380
3
entireties.3 Here, inasmuch as the mark sought to be registered
and the registered mark are identical in all respects,4 the focus
of our inquiry is accordingly on the similarity or dissimilarity
of the respective services and goods.
Turning, then, to such issue, applicant argues in his
brief that because the "goods and services [are] in different
classes," his mark "is therefore entitled to be approved for
publication, and [to] be published for opposition." However, as
the Examining Attorney correctly points out in her brief, the
purpose of the United States Patent and Trademark Office in using
the classification system is for administrative convenience
rather than as an indication of whether goods and/or services are
related or not. See, e.g., Jean Patou Inc. v. Theon Inc., 9 F.3d
1171, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); National Football
League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB
1990); and In re Leon Shaffer Golnick Advertising, Inc., 185 USPQ
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks." 192 USPQ at 29.
4
Applicant urges that his "BEAUTIQUE" mark "is used in conjunction
with other marks" which he owns, including the mark "CRUMMY" and
design, which is the subject of Reg. No. 2,588,737, issued on July 2,
2002 for a variety of goods, including "cosmetics, namely, cologne,
blushes, lipsticks, loose powder, eye makeup, eye pencils, face
makeup, perfume, [and] shadows." However, because the issue of
likelihood of confusion must be decided on the basis of the mark which
applicant seeks to register and the mark shown in the cited
registration, the fact that applicant allegedly uses his "BEAUTIQUE"
mark in conjunction with other marks simply is legally irrelevant and
immaterial to a determination of the issue of likelihood of confusion.
See, e.g., Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456, 459
(CCPA 1959); Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110
USPQ 272, 273-74 (CCPA 1956); Hat Corp. of America v. John B. Stetson
Co., 223 F.2d 485, 106 USPQ 200, 203 (CCPA 1955); and ITT Canteen
Corp. v. Haven Homes Inc., 174 USPQ 539, 540 (TTAB 1972).
Ser. No. 76386380
4
242, 242 n.2 (TTAB 1974). The fact, therefore, that applicant's
services and registrant's goods are classified in different
classes is not an indication that the respective services and
goods are unrelated; instead, such fact is simply immaterial in
determining the issue of likelihood of confusion. See, e.g., In
re Clay, 154 USPQ 620, 621 (TTAB 1967) and cases cited therein.
Applicant also argues that, purportedly, because the
"BEAUTIQUE" mark in the cited registration issued over a
registration for another "BEAUTIQUE" mark (which, subsequently,
was canceled),5 his mark should likewise be registered over the
mark in the cited registration.6 Although implicit in such an
argument is an assertion that applicant's services are no more
related to registrant's goods than registrant's goods were to
those in the earlier issued registration, applicant "questions
why there were no problems with the registration of the marks
cited" and, in view of the pattern or "rule" established by the
issuance of the previous registrations, asks whether "the rule
[has] been suddenly changed based on the Racial Profiling of the
5 Specifically, Reg. No. 1,422,617, which issued on December 30, 1986
and was canceled six years later for failure to file the affidavit
required by Section 8 of the Trademark Act, 15 U.S.C. §1058, listed
the following goods: "eyeglass cases" in International Class 9;
"dental kits" in International Class 10; "luggage and luggage
accessories," including "cosmetic and toiletry cases sold empty," in
International Class 18; "cosmetic brush kits and containers sold empty
... to receive pocket or purse-size tissue packages" in International
Class 21; "shower caps" in International Class 26; and "cigarette
cases" in International Class 34.
6 In a similar vein, applicant accurately points out that now expired
Reg. No. 1,265,483, which as previously indicated in footnote 2 issued
on January 31, 1984 for the mark "BEAUTIQUE" for "permanent hair
waving lotion," registered over then subsisting Reg. No. 1,233,210,
which issued on April 5, 1983 until canceled six years later for
failure to file the affidavit required by Section 8 of the statute.
Ser. No. 76386380
5
Applicant (Individual Jamaican)." Suffice it to say, however,
that at the time that the cited registration issued, the earlier
registration noted by applicant was no longer in force and thus
could not be a possible bar under Section 2(d) of the statute to
issuance of the cited registration.7
Additionally, because the cited registration clearly
specifies "eyeliner pencil and crayons, lipliner pencil and
crayons, [and] combs and brushes for hair" as the registrant's
goods, while applicant's application pertains to "a Service Mark
for a business," applicant asks the question: "How come the
Examining Attorney cannot distinguish the difference?" However,
as the Examining Attorney correctly notes, the issue herein is
"not likelihood of confusion between particular goods [and
services per se], but likelihood of confusion as to the source of
those goods [and services from contemporaneous use of the same
mark]," citing In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984)
and cases cited therein. Furthermore, as the Examining Attorney
accurately observes, it is well established that:
[C]onsumers are likely [to] be confused by
the use of [the same or] similar marks on or
in connection with goods and with services
featuring or related to those goods. See In
7 Additionally, as mentioned earlier in footnote 2, Reg. No. 1,265,483
was not a possible bar to issuance of the cited registration because
registrant was the owner thereof. Moreover, while Reg. No. 1,265,483
did, as noted previously, issue over another subsisting registration
for a "BEAUTIQUE" mark, each case is decided, as the Examining
Attorney properly points out, on its own merits. See, e.g., In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) ["Even if some prior registrations had some characteristics
similar to [applicant's] application, the ... allowance of such prior
registrations does not bind the Board or this court"]; In re Broyhill
Furniture Industries Inc., 60 USPQ2d 1511, 1514 (TTAB 2001); and In re
Pennzoil Products Co., 20 USQP2d 1753, 1758 (TTAB 1991).
Ser. No. 76386380
6
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG's for
retail ... general merchandise store services
held confusingly similar to BIGGS for
furniture); In re U.S. Shoe Corp., 229 USPQ
707 (TTAB 1985) (CAREER IMAGE (stylized) for
retail women's clothing store services ...
held likely to be confused with CREST CAREER
IMAGES (stylized) for uniforms); In re United
Service Distributors, Inc., 229 USPQ 237
(TTAB 1986) (21 CLUB for various items of
men's, boys', girls', and women's clothing
held likely to be confused with THE 21 CLUB
(stylized) for restaurant services ...);
Steelcase Inc. v. Steelcare Inc., 229 USPQ
433 (TTAB 1983) (STEELCARE INC. for
refinishing of furniture, office furniture,
and machinery held likely to be confused with
STEELCASE for office furniture and
accessories); [and] Mack Trucks, Inc. v.
Huskie Freightways, Inc., 177 USPQ 32 (TTAB
1972) (use of similar marks for trucking
services and on motor trucks and busses is
likely to cause confusion).
Lastly, applicant insists that his services are not
related to registrant's goods because applicant uses his mark "as
[a] business model encompassing multi-services at a single
location." However, as identified in his application,
applicant's services are not so limited, nor are there any
restrictions as to the channels of trade with respect to the
goods, as identified, in the cited registration. Applicant's
assertion, therefore, is legally irrelevant inasmuch as it is
well settled that the issue of likelihood of confusion must be
determined on the basis of the goods and services as they are set
forth in the involved application and the cited registration, and
not in light of what such goods and/or services are asserted to
actually be. See, e.g., Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Ser. No. 76386380
7
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Moreover, as the Examining Attorney properly notes, it
is well established that the goods and services at issue need not
be identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods and services are related in some manner and/or
that the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In support of her contention that applicant's services
are indeed related to registrant's goods, the Examining Attorney
has made of record copies of two use-based third-party
registrations in which the same mark is registered for, inter
alia, either "retail personal care product ... store services" or
"retail store outlet services featuring ... cosmetics," on the
one hand, and respectively, either "personal care products,
namely, ... mascara, ... eye shadow, lip stick, [and] lip gloss"
or "cosmetics, namely, eyeliner, eye shadow, mascara, eyebrow
Ser. No. 76386380
8
pencils, eyebrow liner, ... lip liner, lipstick, [and] lip
gloss," on the other hand.8 It is settled, in this regard, that
while use-based third-party registrations are not evidence that
the different marks shown therein are in use or that the public
is familiar with them, such registrations may nevertheless have
some probative value to the extent that they serve to suggest
that the services and goods listed therein are of the kinds 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), aff’d as not citable precedent, No. 88-1444 (Fed. Cir.
November 14, 1988). Here, the two registrations noted above and
made of record by the Examining Attorney serve to confirm the
obvious, namely, that both beauty salons and retail store
services featuring beauty care products would offer for sale and
sell such cosmetic or beauty care products as eye and lip makeup,
including various forms (e.g., pencils and crayons) of eyeliners
and lip sticks. The respective services and goods at issue
herein are thus, in relevant part, sufficiently related that,
when sold or offered under the identical mark "BEAUTIQUE,"
confusion as to the source or sponsorship thereof would be likely
to occur.9 In particular, customers familiar with applicant's
8 Reg. Nos. 2,525,978, issued on January 1, 2002, and 2,372,704, issued
on August 1, 2000.
9 It is well established that a refusal under Section 2(d) is proper if
there is a likelihood of confusion involving any of the services set
forth in an application and any of the goods listed in a cited
registration; furthermore, where a likelihood of confusion is so
found, it is unnecessary to rule with respect to any of the other
services and goods listed therein. See, e.g., Tuxedo Monopoly, Inc.
Ser. No. 76386380
9
"BEAUTIQUE" beauty salons and store services featuring beauty
care products could reasonably believe, upon encountering
registrant's "BEAUTIQUE" eyeliner pencil and crayons and lipliner
pencil and crayons, that applicant has expanded his services to
include the marketing of his own line of beauty care products.
Decision: The refusal under Section 2(d) is affirmed.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ
881, 883 (CCPA 1963).