International Beauty Exchange, Inc.v.K & N Distributors

Trademark Trial and Appeal Board

Sep 20, 2019

92063647 (T.T.A.B. Sep. 20, 2019)

Oral Hearing Held: January 17, 2019 Mailed: September 20, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

————

International Beauty Exchange, Inc.

v.

K & N Distributors
_____
Cancellation No. 92063647
_____

Donald L. Dennison of Butzel Long PC,
for International Beauty Exchange, Inc.
Carrie A. Shufflebarger and Eric N. Heyer of Thompson Hine LLP,
for K & N Distributors.
————
Before Lykos, Shaw, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
K & N Distributors (“Respondent”) is the owner of a registration on the Principal
Register for the mark AFRICAN CLAIR FORMULA PLUS (in standard characters;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92063647
2
AFRICAN and FORMULA disclaimed) for “cosmetics” in International Class 3.1
International Beauty Exchange, Inc. (“Petitioner”) filed an amended petition to
cancel Respondent’s registration on the ground of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on Petitioner’s alleged
prior common law use of the mark AFRICAN FORMULA for a line of cosmetic
products.2 In further support of its likelihood of confusion claim, Petitioner pleaded
ownership of a registration for the mark AFRICAN FORMULA (in typeset form3 and
registered, in whole, under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f)) for
“skin care products, namely, toilet soap, facial cream, and skin lotion; and hair care
products, namely, shampoo, conditioner, straightener and mouse” in International
Class 3.4
As additional grounds for cancellation, Petitioner alleges the claims of no lawful
use in commerce and fraud based on alleged fraudulent claimed dates of use.5
Respondent filed an answer to the amended petition to cancel in which it denied
the salient allegations in the amended pleading.6
At briefing, Petitioner did not pursue either its pleaded no lawful use claim or its

1 Registration No. 4941822, issued on April 19, 2016. The registration includes the following
translation statement: “The English translation of ‘CLAIR’ in the mark is ‘CLEAR.’”
2 19 TTABVUE.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” or
“typeset” drawings. A typed or typeset mark is the legal equivalent of a standard character
mark. TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (October 2018).
4 Registration No. 2822285, issued on March 16, 2004; renewed.
5 19 TTABVUE 9.
6 22 TTABVUE.
Cancellation No. 92063647
3
fraud claim. Accordingly, Petitioner’s claims of no lawful use and fraud are deemed
waived.7 See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014); Swatch
AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3
(TTAB 2013) (opposer’s pleaded claims not argued in its brief deemed waived), aff’d,
787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015).
Additionally, we note that, for the first time in its trial brief, Petitioner attempts
to assert yet another ground for cancellation, namely, that Respondent is not using
in commerce the mark as displayed in its subject registration.8 Respondent objected
to this last minute claim on the grounds that Petitioner did not raise the claim in its
amended pleading nor did it move to amend further its pleading to assert the claim.9
Fed. R. Civ. P. 15(b)(2) provides that when issues not raised by the pleadings are
tried by express or implied consent of the parties, an amendment of the pleadings
may be made to cause them to conform to the evidence. There is no evidence or
argument to demonstrate that Respondent consented to trial on this issue,
particularly since it has expressly objected to this claim in its trial brief. Moreover,
Petitioner cannot meet the standard governing whether an issue has been tried by

7 Even if Petitioner had pursued its fraud claim, incorrect dates of first use do “not constitute
fraud because the first use date is not material to the Office's decision to approve a mark for
publication.” Hiraga v. Arena, 90 USPQ2d 1102, 1107 (TTAB 2009); see also Colt Indus.
Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983). The
critical question is whether Respondent’s mark was in use as of the filing date of its statement
of use. Hiraga, 90 USPQ2d at 1107. Petitioner did not allege fraud on this basis.
8 Petitioner’s Trial Brief, pp. 10-11, 38 TTABVUE 15-16.
9 Respondent’s Trial Brief, pp. 12-13, 40 TTABVUE 17-18.
Cancellation No. 92063647
4
implied consent. Implied consent of an unpleaded claim can be found only “where the
nonoffering party (1) raised no objections to the introduction of evidence on the issue,
and (2) was fairly apprised that the evidence was being offered in support of the issue.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 507.03(b)
(2019). See also Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138
(TTAB 2009); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-21 (TTAB
2008); Boise Cascade Corp. v. Cascade Coach Co., 168 USPQ 795, 797 (TTAB 1970)
(“Generally speaking, there is an implied consent to contest an issue if there is no
objection to the introduction of evidence on the unpleaded issue, as long as the
adverse party was fairly informed that the evidence went to the unpleaded issue.”).
Petitioner does not acknowledge that it is arguing an unpleaded claim in its brief,
let alone address the standard for trying an issue by implied consent. The only
evidence Petitioner identifies to support this unpleaded claim is the testimony of
Respondent’s witness concerning certain packaging of Respondent’s goods that did
not include the term PLUS on the packaging, which arose during Petitioner’s re-cross
examination at the end of Respondent’s witness’s testimony deposition.10 While we
acknowledge that Respondent’s counsel did not object to this line of questioning on
the ground of relevancy during the testimony deposition, nothing in the cited
exchange, however, demonstrates that Respondent or its counsel were fairly apprised
that the evidence was being offered in support of this unpleaded issue. The record

10 Cesar Trial Test., 33:14-22 and 34:1-20 and accompanying Petitioner’s Exh. 1; 37
TTABVUE 35-36 and 92-93.
Cancellation No. 92063647
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also demonstrates that Petitioner’s counsel did not take any steps to put Respondent’s
counsel on notice. On similar facts, the Board has refused to find implied consent,
holding:
The question of whether an issue was tried by consent is basically one
of fairness. The non-moving party must be aware that the issue is being
tried, and therefore there should be no doubt on this matter. This is
especially true if the issue is purportedly tried solely through the
plaintiff’s cross-examination of the defendant’s witness, since the
plaintiff had the opportunity through its pleading to advise the
defendant of the grounds it wished to pursue, and also had the
opportunity if new grounds came to its attention, to file a motion to
amend the pleading under Fed. R. Civ. P. 15(a).

Morgan Creek, 91 USPQ2d at 1134; see also Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ.2d 1340 (TTAB 2017). In view of the foregoing, we have given no
consideration to this unpleaded claim.
The parties have fully briefed the case, and the Board conducted an oral hearing
on January 17, 2019 at Petitioner’s request.
I. Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Respondent’s subject registration file. The record also comprises
the evidence summarized below.
A. Petitioner’s Evidence
1. Testimony Deposition of Johnny Graterol, Vice President of Sales
for Petitioner, and accompanying Exhibits 1-14, including a status
an title copy of Petitioner’s pleaded registration;11

11 33 and 34 TTABVUE.
Cancellation No. 92063647
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B. Respondent’s Evidence
1. Testimony Deposition of Jean-Robert Cesar, Respondent’s
President, and accompanying Exhibits 1-10;12 and
2. Notice of Reliance on status and title copies of 16 third-party
registrations for registered marks including the term AFRICAN or
FORMULA purportedly to demonstrate the weakness of
Petitioner’s pleaded mark.13
II. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Empresa Cubana Del Tabaco 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real
interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie, 50
USPQ2d at 1026.
Petitioner has properly made of record its pleaded registration and has shown the
registration to be valid and subsisting, and owned by Petitioner. The registration
demonstrates that Petitioner possesses a real interest in this proceeding beyond that
of a mere intermeddler, and a reasonable basis for its belief of damage. See

12 37 TTABVUE.
13 36 TTABVUE.
Cancellation No. 92063647
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Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). We find, therefore, that Petitioner has proved its standing to petition
to cancel Respondent’s registration.14
III. Section 2(d) Claim
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a
preponderance of the evidence, that it has priority in the use of its pleaded mark and
that use of Respondent’s mark is likely to cause confusion, mistake, or deception as
to the source or sponsorship of Respondent’s goods, Cunningham, 55 USPQ2d at
1848, even in the absence of contrary evidence or argument. Threshold TV, Inc. v.
Metronome Enters., Inc., 96 USPQ2d 1031, 1040 (TTAB 2010).
A. Priority
In a cancellation proceeding in which both plaintiff and defendant own
registrations, as is the case here, priority is at issue and Petitioner has the burden of
proving its priority. Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281

14 We further note that Respondent does not dispute Petitioner’s standing. See Respondent’s
Trial Brief, p. 5, 40 TTABVUE 10.
Cancellation No. 92063647
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(TTAB 1998). Under Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c), a party
may rely upon the filing date of the application underlying its registration for
purposes of priority as its constructive use date. See Cent. Garden & Pet Co. v.
Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Brewski Beer, 47 USPQ2d
at 84, Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB
1995) (parties may rely on the constructive use i.e. filing dates for purposes of
priority). The fact that a mark is registered under Section 2(f) of the Trademark Act,
as is the case here with Petitioner’s pleaded registration, does not alter the benefits
of constructive use. RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801,
1809 (TTAB 2018) (citing Larami, 36 USPQ2d at 1846) (benefits of constructive use
under Section 7(c) apply “even if the claim of acquired distinctiveness was made after
the filing date of the application and even if the use on which the claim of
distinctiveness was predicated was made mostly after the filing date of the
application”). The filing date of the underlying application of Petitioner’s pleaded
registration, i.e., July 2, 2002, precedes the July 15, 2015 filing date of the underlying
statement of use of Respondent’s subject registration. Respondent has not submitted
any evidence demonstrating use of its mark prior to July 15, 2015. Accordingly,
Petitioner has established its priority of use.15
B. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative

15 We note that Respondent does not dispute Petitioner’s priority of use. See Respondent’s
Trial Brief, p. 5, 40 TTABVUE 10.
Cancellation No. 92063647
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evidence of record bearing on the likelihood of confusion. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”); see also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We must consider each DuPont factor for which there is evidence or argument. See,
e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). These factors, and the other relevant DuPont factors are discussed below.
1. Similarity of the Goods
We begin our analysis with the comparison of the goods, the second DuPont factor.
It is well established that in cancellation proceedings, the similarity of the goods must
be determined on the basis of the goods as identified in the parties’ respective
registrations. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA,
811 F.2d 1490, 1 USPQ2d 1813, 1814 (Fed. Cir. 1987). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard v. Packard Press 62 USPQ2d at 1004; Octocom Sys., Inc. v.
Hous. Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A
likelihood of confusion may be found with respect to a particular class in a
registration based on any product within the identification of goods for that class. See
In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (citing Tuxedo
Cancellation No. 92063647
10
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981)).
Petitioner’s registration identifies the following goods: “skin care products,
namely, toilet soap, facial cream, and skin lotion; and hair care products, namely,
shampoo, conditioner, straightener and mousse.” Respondent’s goods, as identified in
its subject registration, are “cosmetics.” We take judicial notice of the definition of the
term “cosmetics” which is defined as “a powder, lotion, lipstick, rouge, or other
preparation for beautifying the face, skin, hair, nails, etc.”16 Respondent’s broadly-
worded identification of goods encompasses Petitioner’s skin and hair care products.
As such, the goods at issue are identical in part. Thus, the second DuPont factor
strongly favors a finding of likelihood of confusion.
2. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Because the identifications of both Petitioner’s and Respondent’s
goods are identical in-part and are unrestricted as to channels of trade or classes of
customers, it is presumed that their trade channels and classes of purchasers are the
same.17 See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)

16 www.dictionary.com based on the Random House Unabridged Dictionary (2019). The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions.
In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
17 The record itself demonstrates that Petitioner’s and Respondent’s identified goods are
marketed together in the same beauty supply stores. See Graterol Test. Dep., pp. 22-24; 34
TTABVUE 24-26.
Cancellation No. 92063647
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(legally identical goods are presumed to travel in same channels of trade to same class
of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); In re Am. Cruise Lines, Inc., 128
USPQ2d 1157, 1158 (TTAB 2018).
Accordingly, the third DuPont factor also weighs in favor of finding a likelihood of
confusion.
3. Strength of Petitioner’s AFRICAN FORMULA mark
The fifth DuPont factor, the fame of the prior mark, and the sixth DuPont factor,
the number and nature of similar marks in use for similar goods, DuPont, 177 USPQ
at 567, may be considered in tandem to determine the strength of Petitioner’s mark
and the scope of protection to which it is entitled. Bell’s Brewery, 125 USPQ2d at
1345. “In determining strength of a mark, we consider both inherent strength, based
on the nature of the mark itself, and commercial strength or recognition.” Bell’s
Brewery, 125 USPQ2d at 1345 (citing Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014)); see also In re Chippendales
USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength
is measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”).
We initially address the fifth DuPont factor. In determining the commercial
strength or fame of Petitioner’s AFRICAN FORMULA under this factor, such
strength “may be measured indirectly by the volume of sales and advertising
expenditures in connection with the [goods] sold under the mark, and other factors
Cancellation No. 92063647
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such as length of time of use of the mark; widespread critical assessments; notice by
independent sources of the [goods] identified by the mark []; and the general
reputation of the [goods].”18 Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d 1043, 1056 (TTAB 2017). See also Bose Corp. v. QSC Audio Prods. Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as
appropriate proof of strength).
To demonstrate the commercial strength of its AFRICAN FORMULA in
connection with the goods identified in its pleaded registration, Petitioner submitted
both testimony and documentary evidence that demonstrates the following: (1)
between January 1, 2012 and December 31, 2017, Petitioner’s sales of its skin and
hair care products under the AFRICAN FORMULA mark totaled $2,672,107;19 (2)
Petitioner’s goods under the AFRICAN FORMULA mark are generally sold to
distributors at a price point between $9.00 and $40.00 per ounce;20 (3) Petitioner’s
skin and hair care products are advertised under its AFRICAN FORMULA mark in
printed publications and magazines, such as Beauty Store magazine and Beauty
World magazine;21 (4) Petitioner’s skin and hair care products under its AFRICAN

18 The Federal Circuit has held that “‘[w]hile dilution fame is an either/or proposition—fame
either does or does not exist—likelihood of confusion fame varies along a spectrum from very
strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imports., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed.
Cir. 2005) (internal quotation omitted)).
19 Graterol Test. Dep., 17:9-10; 34 TTABVUE 19.
20 Exh. 5 of Graterol Test. Dep.; 33 TTABVUE 4.
21 Graterol Test. Dep., 21:7-10; 34 TTABVUE 23.
Cancellation No. 92063647
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FORMULA mark are also advertised on its own website, as well as third-party
websites such as www.goldenmartbeautysupplies.com and www.amazon.com;22 (5)
Petitioner has expended between $10,000 and $20,000 a year in the advertising and
promotion of its skin and sun care products under its AFRICAN FORMULA mark,
including expenditures for trade shows;23 (6) Petitioner has attended the USA
Comoprof Las Vegas beauty and Dubai Beauty trade shows where it displays its skin
and hair care products under its AFRICAN FORMULA mark;24 and (7) Petitioner has
a presence on social media, including Facebook and Twitter accounts where it
advertises its AFRICAN FORMULA goods.25
“In view of the extreme deference that is accorded to a famous mark in terms of
the wide latitude of legal protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting
that its mark is famous to clearly prove it.” Blue Man Prods. Inc. v. Tarmann, 75
USPQ2d 1811, 1819 (TTAB 2005).
When viewing Petitioner’s “fame” evidence in its totality, we find it very difficult
to ascertain where Petitioner’s AFRICAN FORMULA mark would fall on the fame
spectrum for likelihood of confusion purposes. We initially note while Petitioner has
submitted evidence regarding the dollar amount of its sales and advertising, it is

22 Id. at and Exh. 17 of Graterol Test. Dep.; 33 TTABVUE 23.
23 Graterol Test. Dep. at 21:14-18; 34 TTABVUE 23.
24 Id. at 21:20-22 and 22:1-2, 34 TTABVUE 23-24.
25 Id. at 22:3-5, 34 TTABVUE 24.
Cancellation No. 92063647
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unclear whether these amounts are attributed solely to its sales and advertising in
the United States. Indeed, Petitioner’s witness, Mr. Graterol, testified that Petitioner
sells its AFRICAN FORMULA goods to distributors throughout the world, including
the Caribbean islands, Europe and Africa.26 Mr. Graterol did not testify, however,
that the dollar amount of sales and advertising was limited to the United States. But
even assuming that such sales and advertising numbers were limited to the U.S.,
Petitioner has failed to submit any evidence to demonstrate (1) how its sales and
advertising figures compare to its competitors in the industry, (2) how many times
consumers encounter its AFRICAN FORMULA mark for skin and hair care products,
or (3) any context for its achievements in the skin and sun care product industry, e.g.,
market share. Without comparative numbers or market share percentages, it is
difficult to place the apparent success or renown of Petitioner’s AFRICAN FORMULA
mark into context. Cf. Bose Corp, 63 USPQ2d at 1309. In other words, it is impossible
to ascertain from this record the extent to which consumers have been exposed to
Petitioner’s skin and hair care products under its AFRICAN FORMULA mark vis-à-
vis its competitors, and, thus, whether Petitioner’s evidence of sales, advertising and
media exposure translates into a mark that falls on the very strong end of the fame
spectrum.
With regard to Petitioner’s advertising, although the record demonstrates that
Petitioner’s AFRICAN FORMULA skin and hair care products have been advertised
in a various publications, it is unclear how often these advertisements have been

26 Id. at 11:10-16; 34 TTABVUE 13.
Cancellation No. 92063647
15
placed in such publications or the extent of the circulation of such publications since
it first began using its mark so as to demonstrate widespread consumer recognition
of Petitioner’s mark. Similarly, the record does not demonstrate how many or how
often consumers have been exposed to Petitioner’s advertising on third-party
websites, as well as Petitioner’s own website.
The testimony regarding Petitioner’s presence on social media platform, i.e.,
Facebook and Twitter, also falls short of demonstrating the extent to which potential
consumers have viewed Petitioner’s social media accounts. As such, we are simply
without enough information to determine the degree to which Petitioner’s social
media presence is significant in demonstrating consumer recognition of Petitioner’s
AFRICAN FORMULA mark.
Finally, we note that Petitioner has not submitted any evidence of unsolicited
media attention or awards or accolades Petitioner may have received for its
AFRICAN FORMULA skin and hair care products.
In view of the foregoing, we find that Petitioner’s “fame” evidence lacks sufficient
probative value to establish that Petitioner’s AFRICAN FORMULA mark has
achieved any appreciable commercial renown or recognition among relevant
consumers in U.S. commerce. Thus, the fifth DuPont factor is neutral.
We next address the sixth DuPont factor, the number and nature of similar marks
in use on similar goods. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,
LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Third-party registrations and use of
similar marks can bear on the strength or weakness of a mark in two ways:
Cancellation No. 92063647
16
commercially and conceptually. First, if a mark, or an element of a mark, is used
extensively in commerce by a number of third parties, that could undermine its
commercial strength, as the consuming public may have become familiar with a
multiplicity of the same or similar marks, and can distinguish them based on minor
differences. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674 (Fed. Cir. 2015). “Evidence of third-party use of similar marks on similar
goods is relevant to show that a mark is relatively weak and entitled to only a narrow
scope of protection.” Palm Bay Imports, 73 USPQ2d at 1693, quoted in Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “The weaker [a plaintiff’s] mark,
the closer a defendant’s mark can come without causing a likelihood of confusion and
thereby invading what amounts to its comparatively narrower range of protection.”
Juice Generation, 115 USPQ2d at 1674.
Second, if there is evidence that a mark, or an element of a mark, is commonly
adopted by many different registrants, that may indicate that the common element
has some non-source identifying significance that undermines its conceptual strength
as an indicator of a single source. Jack Wolfskin, 116 USPQ2d at 1136 (“[E]vidence of
third-party registrations is relevant to ‘show the sense in which a mark is used in
ordinary parlance,’ … that is, some segment that is common to both parties’ marks
may have ‘a normally understood and well-recognized descriptive or suggestive
meaning, leading to the conclusion that that segment is relatively weak’”) (quoting
Juice Generation, 115 USPQ2d at 1674).
Cancellation No. 92063647
17
Respondent contends that Petitioner’s AFRICAN FORMULA mark is comprised
of such weak, commonly used elements that consumers will look to the other features
in Respondent’s mark to differentiate the marks in appearance, sound, meaning and
commercial impression.27 Specifically, Respondent maintains that the designations
AFRICAN and derivatives thereof, as well the term FORMULA, are weak or diluted
when used in association with the goods under Petitioner’s AFRICAN FORMULA
mark.28 To demonstrate this alleged weakness, Respondent submitted fourteen live
third-party registrations that include the terms noted above for various skin and hair
products.29 The third-party registered marks are as follows: AFRICAN GOLD,
AFRICAN PRIDE,30 AFRICAN ROYALE, AFRICARE, AFRICAN WONDERS and
design, AFRICA’S BEST, AFRICAN CROWN, AFRICAN SECRET, AFRICAN
HERITAGE and design, AFRICAN DIAMOND, GENUINE AFRICAN FORMULA,
AFRICAN QUEEN, and AFRICAN LEATHER.

27 Respondent’s Trial Brief, p. 6; 40 TTABVUE 11.
28 Id.
29 Respondent’s Notice of Reliance, Exhs. A-P, 36 TTABVUE 7-80. Respondent also submitted
a third-party registration for the mark AFRICAN ESSENCE. This registration, however, has
been canceled and is of no probative value. See Action Temporary Services Inc. v. Labor Force
Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does
not provide constructive notice of anything”). Additionally, Respondent submitted a third-
party registration for the mark AFRICAN VENUS. The record demonstrates, however, that
this registration is owned by a party affiliated with Petitioner. See Graterol Test. Dep. 10:19-
22 and 11:1-7, 34 TTABVUE 12-13. Accordingly, this particular registration has limited to
no probative value.
30 Respondent submitted two registrations for the mark AFRICAN PRIDE owned by the same
third-party registrant.
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In addition, Respondent’s witness, Mr. Cesar, identified approximately ten third-
party uses of marks including either or both the terms AFRICAN (or derivatives
thereof) and FORMULA supported by third-party retail websites or evidence of
purchases of the goods at retail stores for various skin care products.31 The third-
party uses of the marks are as follow: GENUINE AFRICAN FORMULA, AFRICAN
QUEEN, AFRIKARE, AFRICA’S BEST, AFRICAN ESSENCE, AFRICAN GOLD,
AFRICAN ROYALE, AFRICA’S SECRET, AFRICAN VENUS, and AFRICAN
BOTANICS.
The third-party registration and use evidence submitted by Respondent clearly
demonstrates that the term AFRICAN is both commercially and conceptually weak
or diluted when used in connection with skin and hair care products. We note,
however, that Respondent only submitted one third-party registration and a single
example of third-party use for the house mark GENUINE AFRICAN FORMULA
which encompasses Petitioner’s mark in its entirety. This evidence is insufficient to
establish that Petitioner’s AFRICAN FORMULA mark, in its entirety, is
commercially weak.
With regard to the conceptual strength of Petitioner’s AFRICAN FORMULA
mark, we note that Petitioner’s mark was registered under the provisions of Section
2(f) of the Trademark Act which effectively constitutes an admission by Petitioner
that its mark, in its entirety, is not inherently distinctive when viewed in connection

31 Cesar Test. Dep., pp. 9-19 and accompanying Exhs. 3-15; 37 TTABVUE 11-21 and 37
TTABVUE 57-88.
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with Petitioner’s identified goods. See Cold War Museum Inc. v. Cold War Air
Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009); Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)
(“Where, as here, an applicant seeks a registration based on acquired distinctiveness
under Section 2(f), the statute accepts a lack of inherent distinctiveness as an
established fact.”). As such, we find Petitioner’s AFRICAN FORMULA mark is
conceptually weak and, therefore, the scope of protection accorded to Petitioner’s
mark is not as wide as that of an arbitrary or coined mark. That being said, even
conceptually weak marks are entitled to protection, and likely confusion may still be
found where the marks are similar, as discussed more fully below, and where the
goods are identical in part, as is the case here. See In re FabFitFun, Inc., 127 USPQ2d
1670, 1676 (TTAB 2018) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337,
83 USPQ2d 1123, 1125 (Fed. Cir. 2007)).
4. Similarity of the Marks
We next consider the first DuPont likelihood of confusion factor, which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Inn at
St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236
(Fed. Cir. Sept. 13, 2019) (mem) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014)). “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
Cancellation No. 92063647
20
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal citation omitted). The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB
2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Further,
because the involved goods are identical in part, a lesser degree of similarity between
the marks is necessary to support a finding of likelihood of confusion. See Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016).
Lastly, our analysis cannot be predicated on dissection of the involved marks. See
Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in
their entireties. Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, 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 a consideration of the marks in their
entireties. Stone Lion, 110 USPQ2d at 1161.
Petitioner’s mark is AFRICAN FORMULA in standard characters and
Respondent’s mark is AFRICAN CLAIR FORMULA PLUS in standard characters.
Here, Respondent has incorporated the entirety of Petitioner’s mark as a significant
Cancellation No. 92063647
21
feature of its own mark. While there is no explicit rule that likelihood of confusion
automatically applies where a junior user's mark contains the whole senior user's
mark, the fact that Petitioner’s AFRICAN FORMULA mark is subsumed by
Respondent’s mark increases the similarity between the two. See, e.g., In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark
ML is similar to registrant's mark ML MARK LEES); The Wella Corp. v. Val. Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1997); (CALIFORNIA CONCEPT
and surfer design for men's cologne, hair spray, conditioner and shampoo is likely to
cause confusion with the mark CONCEPT for cold permanent wave lotion and
neutralizer); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram
and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975); (applicant's mark
BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause
confusion with BENGAL for gin); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324,
153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women’s dresses is likely
to be confused with LILLI ANN for women’s apparel including dresses); Hunter
Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (applicant’s
PRECISION DISTRIBUTION CONTROL mark found confusingly similar to
opposer’s PRECISION mark).
We also note that the first word in each mark is identical, namely, the term
AFRICAN. The Board has often recognized that the first word in a mark plays a
dominant role in the Section 2(d) analysis because it is likely to be the part noticed
and remembered by consumers. See, e.g., Palm Bay Imports., 73 USPQ2d at 1692
Cancellation No. 92063647
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(stating that VEUVE is a prominent feature of the mark VEUVE CLICQUOT because
it is the first word in the mark); Century 21, 23 USPQ2d at 1700 (stating that
consumers will first notice the identical lead word on encountering the marks).
Visually and aurally, the only difference between Petitioner’s AFRICAN
FORMULA mark and Respondent’s AFRICAN CLAIR FORMULA PLUS mark is the
inclusion of the wording CLAIR and PLUS in Respondent’s mark. The record reveals
that the English translation of the term CLAIR is “clear.” The word “clear” is highly
suggestive, if not descriptive, of Respondent’s goods which include skin creams for
the treatment of acne.32 Thus, the wording CLAIR in Respondent’s mark is less
significant or less dominant when comparing the marks.33 See, e.g., Cunningham, 55
USPQ2d at 1846 (“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.”’) (quoting In re Nat’l Data Corp., 224 USPQ at 752).
With regard to the word PLUS in Respondent’s mark, we find such term is merely
self-laudatory seeking to convey the impression that Respondent’s products are
excellent or of especially high quality. The Board has long recognized the laudatory

32 See Exh. 12 of Graterol Test. Dep., 33 TTABVUE 9.
33 We acknowledge the general principle that when a mark consists of both foreign and
English words, as is the case here, the mark may not necessarily be translated. See, e.g., In
re Universal Package Corp., 222 USPQ 344, 347 (TTAB 1984) (when a mark consists of all
foreign components translation of the entire mark by the consumer is more likely to take
place than when only part of the mark is in a foreign language). However, even if consumers
were not translate the term “clair” as “clear,” because these terms are visually and aurally
similar, consumers could potentially mistake the term “clair” for “clear,” particularly when
the term is part of Respondent’s mark that is used on the packaging of its cosmetic goods that
include skin creams for the treatment of acne.
Cancellation No. 92063647
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nature of the word “plus.” Plus Products v. Natural Organics, Inc., 204 USPQ 773
(TTAB 1979); Plus Products v. Redken Laboratories, 199 UPSQ 111 (TTAB 1978);
Plus Products v. Sterling Food Co., Inc., 188 USPQ 586 (TTAB 1975); Plus Products
v. General Mills, Inc., 188 USPQ 520 (TTAB 1975). As such, the laudatory designation
PLUS contributes much less to the source-indicating significance of Respondent’s
mark.
Finally, consumers familiar with Petitioner’s AFRICAN FORMULA mark may
believe, upon encountering skin care preparations under the mark AFRICAN CLAIR
FORMULA PLUS, that such goods are an extension of or a new item in Petitioner’s
AFRICAN FORMULA line of skin and hair care products. See In re Southern Belle
Frozen Foods Inc., 48 USPQ2d 1849, 1851 (TTAB 1998) (observing that consumers
familiar with registrant’s SHRIMP ROYALE packaged shrimp meal may conclude
that applicant’s SEAFOOD ROYALE frozen crab product is a new line of seafood from
the maker of the SHRIMP ROYALE product); NutraSweet Co. v. K & S Foods, Inc., 4
USPQ2d 1964, 1968 (TTAB 1987) (purchasers familiar with NUTRASWEET product,
upon viewing NUTRA SALT, would be likely to believe it was a new product line put
out by the NUTRASWEET producer or that the product was somehow associated with
or sponsored by the people producing the NUTRASWEET product); Nina Ricci
S.A.R.L. v. Haymaker Sports Inc., 134 USPQ26, 28 (TTAB 1962) (persons familiar
with NINA RICCI or RICCI for women's apparel would logically assume that women's
clothing bearing RICCI OF HAYMAKER emanates from same source or is connected
in some way).
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In view of the foregoing, we find that Petitioner’s AFRICAN FORMULA mark and
Respondent’s AFRICAN CLAIR FORMULA PLUS mark, when viewed in their
entirety, are more similar than dissimilar in appearance, connotation and commercial
impression, notwithstanding the conceptually weak nature of Petitioner’s mark.
Thus, the first DuPont factor favors a finding of likelihood of confusion.
5. Conditions of Sale
Next we consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay Imports, 73
USPQ2d at 1695.
The identifications in Petitioner’s and Respondent’s registration consist of
cosmetic products at no specified price point. Notwithstanding, the record reveals
that Petitioner’s goods are sold at a price point between $9.00 and $40.0034 per ounce
and Respondent’s identified goods are sold at a price point of $4.49.35 At these price
points, we find that the goods are subject to impulse purchase by ordinary users of
cosmetics, including skin and hair care products. Thus, the fourth DuPont factor
regarding consumer sophistication and care favors of finding a likelihood of confusion.

34 Exh. 5 of Graterol Test. Dep.; 33 TTABVUE 4.
35 Exh. 11 of Graterol Test. Dep.; 33 TTABVUE 17.
Cancellation No. 92063647
25
6. Actual Confusion and Opportunity for Actual Confusion
Lastly, we turn to the seventh DuPont factor (nature and extent of any actual
confusion) and the related eighth DuPont factor (extent of the opportunity for actual
confusion).
No evidence of actual confusion was submitted. The absence of any reported
instances of confusion is meaningful only if the record indicates appreciable and
continuous use by Respondent of its mark for a significant period of time in the same
markets as those served by Petitioner under its mark. Citigroup Inc. v. Capital City
Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative,
there must have been a reasonable opportunity for confusion to have occurred.
Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the
probative value of the absence of actual confusion depends upon there being a
significant opportunity for actual confusion to have occurred); Red Carpet Corp. v.
Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya
Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“[T]he absence of
actual confusion over a reasonable period of time might well suggest that the
likelihood of confusion is only a remote possibility with little probability of
occurring”).
The record demonstrates that the parties’ respective products under their
respective marks coexisted in similar market channels for approximately two and
half years before trial briefs were submitted. There is no evidence of record, however,
Cancellation No. 92063647
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demonstrating the amount of sales or advertising of Respondent’s goods under its
AFRICAN CLAIR FORMULA PLUS mark during this time period. Accordingly, it is
impossible to ascertain the extent of consumer exposure or recognition of
Respondent’s mark so as to make a determination whether an opportunity for actual
confusion to occur existed during the time of coexistence of the parties’ respective
marks.
Accordingly, we find the seventh and eighth DuPont factors to be neutral.
IV. Conclusion
We have carefully considered all evidence of record and the parties’ arguments, as
they pertain to the relevant DuPont factors. We treat as neutral any DuPont factors
for which there is no evidence or argument of record.
We conclude, based on the record, that because the marks are similar in sound,
appearance, connotation and commercial impression and inasmuch as the goods are
identical in part and are therefore presumed to travel through the same trade
channels and be purchased by the same classes of consumers, confusion is likely.
Further, while we recognize that Petitioner’s mark is conceptually weak, such
weakness does not make confusion unlikely because, as noted, even weak marks are
entitled to protection against registration of similar marks for goods that are identical
in part, as is the case here. Finally, although Respondent has demonstrated a degree
of time during which the marks have coexisted, without any evidence of actual
confusion or any evidence demonstrating an opportunity for confusion to occur, the
mere time of coexistence, standing alone, is insufficient to avoid a finding of likelihood
of confusion.
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Accordingly, we find that Petitioner has proved a likelihood of confusion under
Section 2(d) of the Trademark Act by a preponderance of the evidence.
Decision: The petition to cancel Respondent’s registration for the mark
AFRICAN CLAIR FORMULA PLUS under Section 2(d) of the Trademark Act is
granted. The registration will be canceled in due course.