No. 77173391 (T.T.A.B. Mar. 4, 2009)

Intelligent Beauty LLC

Trademark Trial and Appeal BoardMar 4, 2009

No. 77173391 (T.T.A.B. Mar. 4, 2009)

Mailed: March 4, 2009 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Intelligent Beauty LLC ________ Serial No. 77173391 _______ John M. Kim of IP Legal Advisors for Intelligent Beauty LLC. Kristin M. Dahling, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Bucher, Rogers and Drost, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Intelligent Beauty LLC seeks registration on the Principal Register of the mark KRONOS (in standard character format) for goods identified in the application, as amended, as follows: “hair care creams, lotions, and preparations; hair shampoos, conditioners, gels, mousses, and sprays; hair styling preparations; and hair styling sprays, none for use on skin or as a skin care treatment” in International Class 3.1 This case is before the Board on appeal from the final refusal of the Trademark Examining Attorney to register this 1 Application Serial No. 77173391 was filed on May 4, 2007 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77173391 - 2 - mark based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney has found that applicant’s mark, when used in connection with the identified goods, so resembles KRONOS SKINCARE (in standard character format) for services recited as “providing skin care treatments, namely, enzyme and chemical peels, hydrating treatments, multi-vitamin treatments, oxygenating treatments, and dermabrasion” in International Class 42,2 as to be likely to cause confusion, to cause mistake or to deceive. Applicant and the Trademark Examining Attorney fully briefed the appeal. We affirm the refusal to register. Applicant contends that the Examining Attorney has failed to support her argument that hair care products are related to skin care services. By contrast, the Trademark Examining Attorney argues that third-party registrations combined with usage on the Internet demonstrate the relatedness of these goods and services. Likelihood of Confusion We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of 2 Registration No. 2726344 issued on June 17, 2003. No claim is made to the term “Skincare” apart from the mark as shown. Serial No. 77173391 - 3 - confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). While applicant has effectively conceded the similarity of the marks, we agree that they are in fact quite similar. The identical term in the marks, “Kronos,” appears to be an arbitrary and strong mark for registrant’s services. The word “Skincare” is generic for registrant’s “skin care treatment” services, it is disclaimed in the cited registration, and this term creates no significant distinction between the respective marks. Hence, this case turns on the relationship of applicant’s goods to the services of registrant. Accordingly, substantially all of applicant’s arguments have to do with claim that the Trademark Examining Attorney has failed to prove that its Serial No. 77173391 - 4 - hair care products are related to registrant’s skin care services. Applicant is most adamant in alleging that the Trademark Examining Attorney has impermissibly expanded the definition of the relevant industry. In short, the argument is that an establishment that provides only skin care services (no hair care services) does not sell hair care products: Applicant has specifically enumerated only certain hair care products and specifically excluded any skin care products from its application. Despite this careful tailoring of its goods, the Examining Attorney has impermissibly broaden[ed] the scope of its goods and the registrant’s services by defining the respective goods and services as “beauty care items and services” in an attempt to support her argument that hair care products are related or similar to skin care services. If the Examining Attorney’s arguments are allowed, then the Examining Attorney or any third party who wished to oppose an application could simply broaden the scope of any goods and services to fit their arguments, as the Examining Attorney has done herein. For example, if a video game manufacturer wished to oppose an application for website design services, it could simply define the video game product and website design services as “high technology goods and services.” Applicant’s brief at 3. Nonetheless, in support of this relationship, the Trademark Examining Attorney has submitted for the record copies of more than twenty registrations owned by third parties having both hair care products in International Serial No. 77173391 - 5 - Class 3 and skin care services in International Class 42/44. We have listed many of them, as follows: for “hair care and cosmetic products, namely, shampoo, conditioners, hair styling preparations and hair sprays” in International Class 3; “hair cutting, removal, styling, treatment and coloring services; manicure and pedicure services; cosmetology services, namely, skin care and makeup services; and massage services” in International Class 42;3 A STEP UP FROM THE COSMETIC COUNTER for “skin care products, namely skin cleaners, astringents, toners, softeners, moisturizers, fresheners, conditioners, skin treatment masques, skin firming creams, lotions for protecting skin, bath oil, suntan lotion, creams for revitalizing the skin, eye makeup remover, skin treatment cream, eye cream, eye soothing gel, masques, exfoliants, body creams, sunscreens, hand creams, and makeup removers; cosmetics, namely makeup base, bronzer, facial powder, facial blush and brush, contour shading makeup, blemish covering makeup, lipsticks, lip liner pencils, eye liners, mascaras, eyebrow pencils, eye shadow, nail polish, lip gloss and lip brushes sold as a unit, foundations and concealers; hair care products, namely shampoos, hair conditioners, hair styling lotions, hair colorings, hair dye and hair bleaching preparations, hair color developers, hair color intensifiers, hair color removers, hair lightening preparations and hair highlighting preparations, hair sprays, hair gels and mousses, hair treatments, permanent hair waving and curling preparations, and hair dressings; nail care preparations; and cologne” in International Class 3; “salon and spa services for skin care, massages, manicures, pedicures, and body treatments” in International Class 42;4 3 Registration No. 2485060 issued on September 4, 2001; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. 4 Registration No. 2548423 issued on March 12, 2002; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. Serial No. 77173391 - 6 - for “bleaching preparations and other substances for laundry use; soaps, namely disinfectant and deodorant soaps, medicated soaps, antiperspirant soaps; perfumery, namely oils for perfumes and scents, essential oils for personal use; cosmetics, namely skin care, skin protection, and skin cleaning agents in the form of solutions, lotions, creams, ointments, pastes, oils, powders and gels, deodorants for personal use, shampoos, and hand cleaning preparations” in International Class 3; “consultation services in the field of cosmetic and beauty-care services, namely, skin protection, skin cleaning and skin care; consultation services in the field of personal care, preparation and ingredients for such skin protection, skin cleaning and skin care preparations; consultation services in the field of legal principals of skin protection in the trade and industry; cosmetic research for others; namely, scientific and industrial research for skin protection, skin cleaning and skin care; laboratory research in the field of cosmetic and beauty-care services, namely, skin protection, skin cleaning and skin care” in International Class 42;5 DR. MED. CHRISTINE SCHRAMMEK for “body and beauty care products, namely, skin creams, face creams, day and night creams, eye care creams, hydrating body lotions, face lotions, toners, skin cleaners, cleansing milk, face waters, bath and shower gels, eye gel, face masks, peeling products, particularly plant-based peeling products; perfumery goods, namely, perfume, cologne; deodorants for personal use; soaps; hair dyes and hair care preparations, hair lotions; essential oils for personal use; dentifrices” in International Class 3; “skin care salons, namely, cosmetic salon services” in International Class 42;6 BLUSH SPA for “cosmetics, namely, skin moisturizer, liquid scrubs, gel scrubs, cream scrubs, skin soap, shower gel, body firming gels and lotions, skin masks, makeup, lipstick, lip gloss, nail polish, eye makeup, hair care and non-medicated scalp care preparations, hair shampoo, hand cream, foot cream, perfume, cologne, eau de toilette, scented body sprays, facial cleansers, skin toners, exfoliating body scrubs, sun block, personal 5 Registration No. 2660299 issued on December 10, 2002; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. 6 Registration No. 2767683 issued on September 23, 2003. Serial No. 77173391 - 7 - deodorants, body oils, skin clarifiers, cleansers, cream, emollients, lighteners, lotion, masks, exfoliating liquid scrubs, exfoliating gel scrubs, exfoliating cream scrubs, soaps and toners; non- medicated lip balm; shower gel; body firming gels and lotions; body cream, oil, emulsions, masks and scrubs; makeup; lipstick; lip gloss; nail polish; eye makeup; blush; mascara; hand cream,; foot cream; exfoliating body scrubs; sun block; after- sun lotions; self-tanning skin preparations; cuticle conditioners; facial cleansers, creams, emulsions, masks and scrubs; essential oils for personal use; personal deodorant; antiperspirant; makeup remover; toilet soap; bath beads, crystals, foams and gels” in International Class 3; “spa treatments and services, namely providing massage, facials and skin care treatments, wet and dry body treatments, nail care, manicures and pedicures; body waxing services; beauty consultation services” in International Class 44;7 EGYPTIAN REVIVAL for “skin care products, namely hand and body cleansers, moisturizers, anti-aging creams and lotions, glycolic products, exfoliators, creams, lotions, milks, sun protectors, sun block, sun care, self-tanners, aromatherapy oils, bath salts, soaps, massage oils; hair care products, namely shampoos, conditioners, hairspray, gels, and hair color; nail care products, namely nail polish and nail care preparations; makeup” in International Class 3; “providing day spa services, namely hair salon services, skin care services, massages, manicures, pedicures and spray-on-tanning salon services” in International Class 44;8 7 Registration No. 2855076 issued on June 15, 2004. 8 Registration No. 2875262 issued on August 17, 2004. Serial No. 77173391 - 8 - for “hair care styling preparations, namely, hair gel, hair mousse and hair lotions; coloring products, namely, hair dyes” in International Class 3; “personal care services in the nature of hair styling, cutting, conditioning and coloring; skin care salons, massage therapies, nail manicuring services, foot treatments, namely, pedicures, and body, hand foot treatments, namely, body, hand and foot waxing; health spa services including aromatherapy, body wraps, skin peels, including facial peels, and milk therapy in the nature of milk baths” in International Class 42;9 for “hair shampoo, hair conditioner, bath gel, massage cream, salt body scrub, facial scrub, facial peel, day cream, night cream, eye cream, eye gel, non-medicated skin care facial serums, eye make up remover, facial cleanser, skin care facial toner, facial mask, body wash, body gel, body cream, body lotion, body scrub, body peel, dry oil body spray, make-up, foundation make-up, pressed face powder, lip stick, lip liner, eye liner, eye shadow, bronzer, lip gloss, facial concealer, nail polish, self-tanning sun tan lotion, gel and oil, sunscreen, non-medicated foot cream, hair care preparations, hair spray, hair gel, hair mousse, bath oil, massage oil, and cosmetics” in International Class 3; “beauty salon services and health spa services, namely, cosmetic body care services consisting of massages, body masks and wraps, skin care therapies, facials, waxing, body exfoliating treatments, water therapies, nail care therapies, manicures and pedicures” in International Class 44;10 ARTESIA for, inter alia, “ … facial cleansers, facial creams, facial makeup, facial emulsions, facial scrubs, foundation, fragrances for personal use, hair and body gel, hair care preparations, hair cleaning preparations, hair conditioners, hair shampoo, hand lotions, hand soaps, lip balm, lip cream, lip gloss, lipstick, hair and body lotions, … skin abrasive lotions, skin care products, namely, skin clarifiers, skin cleaners, skin cleansing creams, 9 Registration No. 2919223 issued on January 18, 2005. 10 Registration No. 2942871 issued on April 19, 2005. Serial No. 77173391 - 9 - skin cleansing lotions, skin creams, skin conditioners, skin emollients, skin gels, skin lotions, skin lightening lotions, skin masks, skin moisturizer, skin moisturizer masks, skin soap, skin toners, skin texturizers, skin whitening cream, sun block, sun block preparations, sun block creams, sun block, sun block cream, sun creams, sun screen, sun tan lotion, sun tan gel, sun tanning preparations, topical skin sprays, wrinkle removing skin preparations” in International Class 3; “aromatherapy services, cosmetic analysis, cosmetic and plastic surgery, cosmetic dentistry, health spa services, namely, cosmetic body care services, health care services, massage, medical services, skin care salons” in International Class 44;11 AMAN for “essential oils for personal use; cosmetics, hair lotions” in International Class 3; “health spa services, namely, cosmetic body care services; weight reduction, gain and maintenance services, beauty salon services, namely, pedicure and manicure services, hair styling and cutting services; skincare salons; massage services” in International Class 44;12 DREAMSKIN for “beauty care goods, namely non-medicated skin care lotions, creams and soaps and hair shampoos; medicated soaps” in International Class 3; “beauty care services, namely, hair styling; skin care salons” in International Class 44;13 for “hair products, namely, shampoo, conditioner, hair balsam, sculpting hair gel, massage oils, facial creams, body lotion, face lotions, eye lotions, facial cleansers, skin cleansers, make-up removing lotions, facial beauty masks, facial emulsions, facial masks, facial scrubs, facial washes; nail polish, nail polish base coat, nail polish top coat, nail-polish removers, nail cream” in International Class 3; “beauty salons, hairdressing salons, nail care salons, body massages and skin care salons” in International Class 44;14 11 Registration No. 3105855 issued on June 20, 2006. 12 Registration No. 3133393 issued on August 22, 2006. 13 Registration No. 3144790 issued on September 19, 2006. 14 Registration No. 3152143 issued on October 3, 2006. Serial No. 77173391 - 10 - RODAN + FIELDS for, inter alia “ … non-medicated skin care preparations, namely anti-perspirant/deodorants, body creams, body exfoliating preparations, body lotions, body oils, body powders, body scrubs, body toners, body washes, eye creams, eye gels, eye makeup removers, face creams, face gels, face lotions, face masks, facial cleansers, facial emulsions, facial exfoliating preparations, facial makeup removers, facial moisturizers, facial soaps, facial toners, hair conditioners, hair makeup, hair mascaras, hair mousses, hair revitalizing treatments, hair shampoos, hair sprays, hair straigheners, hair styling gels, hair sunscreens, hair thickeners, hand creams, non-medicated anti- wrinkle creams, lotions and gels, non-medicated facial skin oil controllers, non-medicated skin blemish preparations, non-medicated skin renewal creams, non-medicated skin repair creams, lotions and gels, personal soaps, skin balancing lotions, skin cleansing preparations, skin firming preparations, skin brighteners, skin lighteners, skin refreshers; toiletries, namely, bath grains, bath oils, bath powders, bath salts, body cleansers, salt scrubs for the skin, shaving foams, creams, lotions and gels, skin bronzing creams, lotions and gels sunless tanning preparations, sunscreens for the body, sunscreens for the face and after-sun soothing and moisturizing preparations” in Int. Class 3; “beauty consultation services regarding the selection and use of personal care products, cosmetics, cosmeceuticals, toiletries, perfumery, bath and body products, medicated and non- medicated skin care preparations, hair care products and beauty treatments, color analysis and personal appearance; and provision of information concerning color analysis, personal care products, cosmetics, cosmeceuticals, toiletries, perfumery, bath and body products, medicated and non-medicated skin care preparations, hair care products, beauty treatments and personal appearance” in Class 44;15 SUMITA for “beauty salon products, namely, toiletries, cosmetics, fragrances, and beauty preparations…; hair and body shampoo, hair conditioner, mousse, scalp conditioner, hair rinses, 15 Registration No. 3165883 issued on October 31, 2006. Serial No. 77173391 - 11 - hair gel, skin cleansing cream, facial, hand and body creams, lotions and moisturizers, bubble bath, bath oil, bath salts, bath and body gels, shower gel, bath and baby powder, facial scrubs, facial beauty masks, talcum powder, perfume, cologne, toiler water, after shave, shaving cream, shaving balm, shaving gel, bar body soap, liquid body soap, deodorant soap, body oil, breath freshener; hair bleaching preparations, hair lighteners, eye cream, night cream, hair lotions, skin toners, tooth gel, mouthwash, toothpaste, non-medicated lip balm, massage oil, cosmetic towelettes, sun block, and sunscreen creams and lotions” in International Class 3; “beauty salon services, namely, hygienic and beauty care and hair salon services, namely, skin care treatments, hair care treatments, hair cutting, hair styling, tattoo, Mehndi and Henna services, personal care treatments, namely eyebrow and facial threading, waxing, and make-up, facial and body cosmetic treatments, providing information about beauty, beauty consultation, hair consultation” in International Class 44;16 for “cosmetics, namely, skin care and hair care preparations” in International Class 3; “beauty salon services, namely, skin care treatments, facial treatments, holistic body therapy, hand and foot reflexology therapy, hypnotherapy, and meditation therapy” in International Class 44;17 These third-party registrations demonstrate that some beauty salons and/or health spas that are in the beauty / personal care services business use one mark to identify a broad span of goods and services for hair care, nail care and skin care. We draw this conclusion from the evidentiary value of the registrations, not from the Trademark Examining Attorney’s use of what applicant alleges are industry- 16 Registration No. 3248462 issued on May 29, 2007. 17 Registration No. 3367703 issued on January 15, 2008. Serial No. 77173391 - 12 - broadening terms such as “beauty care items and services.” Not all of these third-party registrations cover as wide a span of services as they do goods. The record is clear, however, that there are among the previous service mark / trademark owners a number of skin care service mark registrants who do not enumerate any hair care services but still list a variety of hair care products. Although these registrations are not evidence that the different marks shown therein are in use or that the public is familiar with them, they nevertheless have probative value in that they serve to suggest that the goods and services listed therein (which are the same types of goods and services involved herein) are of a kind which may emanate from a single source. Accord In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). The Trademark Examining Attorney also retrieved from the Internet examples of the relationship of these respective services / goods. Accordingly, the record coantins screen prints from various websites showing merchants and service providers, from nationally-known brand names like “Elizabeth Arden” to local beauty salons / health spas using the same trademark / service mark for hair care Serial No. 77173391 - 13 - products and skin care services. Some cases are drawn from the same website, other from different websites: • Elizabeth Arden Red Door Spas and Elizabeth Arden Hair Care 18 • Aveda Hair care products and Aveda Salon/Spa services 19 • Zazu spa services and hair care products 20 • Fango Spa and Salon 21 22 18 http://www.reddoorspas.com/ and http://shopping.yahoo.com/s: Hair%20Care:4168-Brand=Elizabeth%20Arden 19 http://www.aveda.com/templates/products2/mpp.tmpl?CATEGORY _ID=CATEGORY9515 and http://aveda.aveda.com/enter/stores/spa_services.asp 20 http://www.zazu.net/index.htm Serial No. 77173391 - 14 - • Web pages from the Santangelo Salon, Spa and Clinic, in Cheektowaga, NY] 23 24 • Beauty Source 21 https://www.fangodayspa.com/store/SpaServices.html 22 https://www.fangodayspa.com/store/HairCare.html 23 http://www.santangelohair.com/dayspa.html 24 http://www.santangelohair.com/store/commerce.cgi?product =haircare Serial No. 77173391 - 15 - 25 • Krïsten Salon Krïsten Salon, offering Hair & Skin Care Services in North Chelmsford, MA, is touted as “One of the Top 200 Salons in the Nation” – Salon Today Magazine, offers hair care products and skin care services.26 These websites are sufficient to corroborate the real- world relationship between registrant’s services and applicant’s goods shown in the third-party registrations. Notwithstanding applicant’s arguments to the contrary, there is sufficient evidence in the file that the dividing line between its hair care goods and registrant’s skin care services is not as clear as applicant would have us believe. The Trademark Examining Attorney has shown that given the conditions and activities surrounding the marketing of these respective goods and services, these goods and services would be encountered by the same persons under circumstances that could, because of the clear similarity of the marks, 25 http://www.ci.san-ramon.ca.us/ssr/healthbeauty.asp 26 http://www.kristensalon.net Serial No. 77173391 - 16 - give rise to the mistaken belief that they originate from the same source. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). As to two related du Pont factors, we also find an overlap in the established, likely-to-continue trade channels, as well as the fact that the respective goods and services would both be encountered by the same classes of ordinary consumers. In conclusion, we find that because of the substantially identical marks and the demonstrated relationship between the goods and services, confusion is likely between applicant’s KRONOS mark and the KRONOS SKINCARE mark in the cited registration. Decision: The refusal to register under Section 2(d) of the Trademark Act is hereby affirmed.