Jackson Intl. Trading Co., K.D. Bruhl Gesellschaft m.b.H. & Co. KG

Trademark Trial and Appeal Board

Aug 10, 2007

No. 76511736 (T.T.A.B. Aug. 10, 2007)

Mailed:
August 10, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jackson Intl. Trading Co., K.D. Brühl Gesellschaft
m.b.H. & Co. KG
________

Serial No. 76511736
_______

Ursula B. Day for Jackson Intl. Trading Co., K.D. Brühl
Gesellschaft m.b.H. & Co. KG.

Marc Leipzig, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Walters, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On May 6, 2003, Jackson Intl. Trading Co., K.D. Brühl
Gesellschaft m.b.H. & Co. KG (applicant) applied to
register the mark SATISFACTION in standard-character form
on the Principal Register for goods now identified as:
adhesives for cosmetic use, skin lotions, ammonia for
cleaning purposes, antiperspirants, artificial
eyelashes, artificial fingernails, astringents for
cosmetic purposes, skin soaps, facial scrubs, hair
shampoos, bath gels, bath salts, body masks, laundry
bleach, hair bleaching preparation, bluing for
laundry, blusher, makeup, breath freshener, bubble
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76511736
2
bath, floor buffing compound, carburetor and choke
cleaning preparations, chrome polish, cologne, hair
conditioners, cold creams, cosmetic compacts, cosmetic
pencils, cotton for cosmetic purposes, cuticle
removing preparations, shampoos, dentifrices,
deodorants for personal use, laundry detergents, drain
openers, hairdyes, emery boards, fabric softeners,
food flavorings, namely essential oils, lip gloss,
non-medicated hair care preparations, incense, nail
care preparations, oven cleaners, paint removers,
chrome polish, furniture polish, nail polish, polymer
sealants for cleaning, shining, and protecting
automobile exterior surfaces, hair pomades, potpourri,
rouge, rust removing preparations, sachets, saddle
soap, sandpaper, spot remover, laundry starch, paint
stripper, sun tanning preparations, cotton swabs for
cosmetic purposes, wax stripping preparations, and
pre-moistened cosmetic wipes, in International Class
3.

Applicant amended the identification of goods a number of
times to arrive at this identification. The application
also includes goods in International Classes 25 and 32
which are not relevant here. The refusal at issue is
limited to International Class 3. Applicant asserts an
intention to use the mark in commerce under Trademark Act
Section 1(b) and ownership of a foreign registration under
Trademark Act Section 44(e) as the bases for the
application. 15 U.S.C. §§ 1051(b) and 1126(e).
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with prior Registration No. 2775351
for the mark PURE SATISFACTION in standard-character form
on the Principal Register for “body lotions, body powders,
Ser No. 76511736
3
body oils and body creams” in International Class 3 and
“gels for use as a personal lubricant” in International
Class 5. The application which resulted in the cited
registration was filed on December 16, 2002, and the
registration issued on October 21, 2003. The registration
specifies a date of first use anywhere and first use in
commerce of January 2001 for both classes.
Applicant argued against the refusal; the Examining
Attorney made the refusal final; and applicant appealed.
Both applicant and the Examining Attorney have filed
briefs. We affirm the refusal.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
Ser No. 76511736
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1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will consider each of the factors
as to which applicant or the Examining Attorney presented
arguments or evidence.
A. The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed, “…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. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Ser No. 76511736
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In this case the domianant element in each of the
marks is SATISFACTION. The only difference between the
marks is the presence of PURE in the registered mark. PURE
modifies and is subordinate to SATISFACTION in the
registered mark. Under these circumstances, PURE is not
sufficient to distinguish the marks. PURE could simply
suggest a related line of products from the same source as
the SATISFACTION mark, a line which is perhaps superior to
or more expensive than the products sold under the
SATISFACTION mark.
Accordingly, we conclude that the marks of applicant
and registrant are similar in appearance, sound,
connotation and commercial impression.
B. Strength of the Registered Mark
Applicant also argues that the SATISFACTION component
of the registered mark is weak, and consequently that the
registered mark is only deserving of narrow protection. In
fact, this is the only argument applicant offers with
regard to the marks at issue here. Applicant states,
“Significantly, the term ‘Satisfaction’ appears in
multitudes of marks on the register with other identical
marks ‘Satisfaction’ or with additional terms. Such marks
are not very strong when a number of them are registered
for closely related goods.” Applicant’s Brief at 13-14.
Ser No. 76511736
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Other than the marks at issue here, the only third-party
registration applicant identifies is Registration No.
2794800 for the mark SATISFACTION for “sexual pleasure
creams.”1 Id. at 14. Applicant refers to this registration
in its response of December 3, 2004 and in its brief.
Applicant has not provided a copy of any record related to
this registration, but only refers to the limited
information above in its brief. In a response dated August
23, 2005 applicant also refers to a pending appllcation for
the mark “… DELIVERING SATISFACTION Ser. No. 78/250,597
with identical or closely related goods…”2 Again, applicant
did not provide a copy of any record related to this
application.
The Board generally will not consider mere listings of
or references to third-party applications or registrations.
In re Psygnosis Ltd., 51 USPQ2d 1594, 1597-98 (TTAB 1999).
However, because the Examining Attorney failed to advise
applicant during the prosecution of the application, or for
that matter in his appeal brief, that the evidnce was not
in proper form, we will consider it, however limited its

1 In fact, the goods in this registration are identified as
“women’s pleasure enhancer cream sold for women’s sexual
enhancement.”
2 This intent-to-use application now stands abandoned.

Ser No. 76511736
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probative value may be. Cf. In re Hayes, 62 USPQ2d 1443,
1445 n.3 (TTAB 2002).
As to the abandoned application, even active
applications have little or no probative value under these
circumstances. Here we have an abandoned, intent-to-use
application. Consequently, we find applicant’s reference
to the pending application insufficient to demonstrate that
SATISFACTION, as used in the registered mark, is weak.
Regarding the third-party registration, the reference
to this one third-party registration is not sufficient to
establish that SATISFACTION, as used in the registered
mark, is weak.
C. The Goods
The goods of applicant and registrant need not be
identical to find likelihood of confusion under Section
2(d). They need only be related in such a way that the
circumstances surrounding their marketing would result in
relevant consumers mistakenly believing that the goods
originate from the same source. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
See also On-Line Careline Inc. v. America Online Inc., 229
F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Also, the proper inquiry is not whether the goods
could be confused, but rather whether the source of the
Ser No. 76511736
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goods could be confused. Safety-Kleen Corp. v. Dresser
Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975);
In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984).
The goods in the cited registration are: “body
lotions, body powders, body oils and body creams” in
International Class 3 and “gels for use as a personal
lubricant” in International Class 5. The goods in the
application, as amended, include, among other things, the
following:
… skin lotions, … skin soaps, facial scrubs, hair
shampoos, bath gels, bath salts, body masks, … makeup,
… cologne, hair conditioners, cold creams, … shampoos,
… deodorants for personal use, … lip gloss, … hair
pomades, … sun tanning preparations …” in
International Class 3.

Applicant states, “accordingly, applicant submits that
registrant’s goods are only products for the body. Since
applicant has deleted these body items from the description
there is not (sic) longer any overlap in the description of
goods… In summary, the applicant’s goods as amended have
removed any overlap in the applicant’s and registrant’s
goods.” Applicant’s Brief at 15.
The Examining Attorney argues that the goods of the
parties are related. The Examining Attorney has made
several use-based, third-party registrations of record in
support of this argument, registrations which include the
Ser No. 76511736
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types of goods identified in the application, as well as
those identified in the cited registration. The following
are among those registration records:
Registration No. 2882832 for the mark ORGANICBEAUTY
for cleansers, skin cleansers, body scrubs, facial
scrubs, skin cleansing lotion, skin lotions, facial
lotions, body lotions, facial moisturizer, face
moisturizer, body moisturizer, makeup, skin
moisturizer, masks, beauty masks, skin masks, face
creams, facial creams, skin cleansing cream, soap for
hand, face and body, facial soaps, skin soap, skin
conditioners, skin abrasive preparations, skin
clarifiers, skin emollients, wrinkle removing skin
preparations, bath gel, skin gel, skin oil, body oil;

Registration No. 2918063 for the mark WONDERBALM for
cosmetic preparations, namely, body creams; body
powder, cold cream, skin moisturizer, hand cream,
namely, exfoliating and moisturizing preparations,
skin care products, namely, skin lotions and creams,
skin cleaners, skin toners and skin soaps; and

Registration No. 2885302 for the mark UP & GO! (with
design) for cologne, eau de toilette, toilet soap,
body lotion, body splash, hand cream, body creams,
skin cream.

These registrations, and the others submitted by the
Examining Attorney, indicate that the goods of applicant
and registrant are the types of goods which may emanate
from the same source. In re TSI Brands Inc., 67 USPQ2d
1657, 1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993). In fact, applicant’s
arguments notwithstanding, we fail to see any meaningful
distinction between the “skin lotions” in its application
Ser No. 76511736
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and the “body lotions” in the cited registration.
Accordingly, we conclude that the applicant’s goods and the
goods in the cited registration are overlapping and
otherwise closely related.
D. Conclusion
In summary, we have considered all of the evidence of
record bearing on the du Pont factors and conclude that
there is a likelihood of confusion between applicant’s
SATISFACTION mark and the PURE SATISFACTION mark in the
cited registration. We conclude so principally because the
marks are similar and the goods in the application and the
cited registration are overlapping and otherwise closely
related.
II. Other Arguments
In point of fact, applicant devotes most of its brief
to arguments unrelated to the du Pont factors. Rather,
applicant argues at length that the refusal should be
reversed because the USPTO allegedly failed to act
consistently with regard to the cited registration and its
current application.
Applicant’s argument rests on its ownership of
canceled Registration No. 2060719 for the SATISFACTION mark
for essentially the same goods identified in the
application at issue here. The registration issued on May
Ser No. 76511736
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13, 1997 based on the same foreign registration applicant
relies upon here; the registration was canceled on February
14, 2004 due to applicant’s failure to file an affidavit of
use under Trademark Act § 8, 15 U.S.C. § 1058.
In fact, in the first office action in the application
before us the Examining Attorney advised applicant, among
other things, that issuance of a registration in this
application might result in duplicate registrations because
applicant’s prior registration had not yet lapsed. In its
March 24, 2004 response applicant advised the Examining
Attorney that its prior registration had lapsed, thus
eliminating the potential for a duplicate registration.
Applicant argues further that the USPTO should have
refused registration in the case of the cited registration
based on its prior registration. Applicant argues that
because the USPTO allegedly permitted its prior
registration to coexist with the cited registration, we
must reverse the refusal here. In so arguing applicant
attempts to distinguish cases cited by the Examining
Attorney in defense of his actions here.
We find none of applicant’s arguments in support of
its position persuasive. This Board has rejected the
premise that evidence that similar marks previously
“coexisted” on the register precludes a refusal which is
Ser No. 76511736
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otherwise proper. See Mattel, Inc. v. Funline Merchandise
Co., Inc., 81 USPQ2d 1372, 1375 (TTAB 2006). See also In
re Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001). More
importantly, as the Examining Attorney stated, we must
consider the refusal before us on the merits without regard
to actions taken by examining attorneys in other
applications. In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). See also In re
Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). This
principle applies to the issues in this case.
Here applicant in essence asks us to accord to it
priority or other benefits based on its canceled
registration. We decline to do so. Applicant could have
maintained its prior registration by filing its affidavit
of use in commerce; applicant did not do so. Instead
applicant pursued this application based on its intention
to use the mark in commerce and its foreign registration.
If applicant possesses rights prior to the rights of the
registrant in the cited registration, apart from its
canceled registration, applicant may consider a
cancellation proceeding under Trademark Act § 14, 14 U.S.C.
§ 1064. We find nothing improper in the actions taken on
this application.
Ser No. 76511736
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Decision: The refusal to register based on Section
2(d) of the Trademark Act is affirmed.