Jafer Limited

Trademark Trial and Appeal Board

Feb 4, 2008

No. 78663877 (T.T.A.B. Feb. 4, 2008)

Mailed:
February 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jafer Limited
________

Serial No. 78663877
_______

Marnie Wright Barnhorst of The Trademark Group, APLC for
Jafer Limited.

Won T. Oh, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Jafer Limited has appealed from the final refusal of
the Trademark Examining Attorney to register MAQ-OFF, in
standard character format, for “eye makeup remover,
eyelashes makeup remover, eyebrow makeup remover, facial
makeup remover, lip makeup remover.”1 Registration has

1 Application Serial No. 78663877, filed July 5, 2005, based on
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-to-
use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78663877
2
been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark MAKE-OFFS, registered for “make-up
remover pads,”2 that if used on applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive.
We affirm the refusal of registration.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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 considerations are the similarities
between the marks and the similarities 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).
With respect to the goods, they are essentially
identical. Applicant’s goods are makeup remover, while the
registrant’s goods are identified as “make-up remover

2 Registration No. 1774855, issued June 8, 1993; renewed.
Ser No. 78663877
3
pads.”3 It appears to us that applicant’s goods, as
identified, could encompass “make-up remover pads,” since
such pads are pre-moistened with makeup remover and
therefore are simply a makeup remover sold in a particular
format. See, for example, the listing of record for Andrea
EyeQ eye makeup remover pad, stating that “Andrea EyeQ’s
Oil Free Eye Makeup Remover Pads are saturated with an oil
free cleanser to easily remove all types of makeup.”
www.folica.com.
However, because the Examining Attorney never took
this position, we will treat applicant’s identified goods
as not including a pre-moistened pad. Even so, the goods
must be considered virtually identical. They are both
essentially the same item, makeup remover, and differ only
as to the form in which it is sold, e.g., one is sold as a
liquid or gel in a bottle or tube, and the other is sold in
the form of a pre-moistened pad.
Applicant has tried to characterize the goods as being
different by stating that its goods are “a cream or gel
solution sold in a tube while Registrant’s goods are 100%
dry cotton fiber pads sold in clear plastic packaging.”

3 Registrant has hyphenated the word “makeup” in its
identification, while applicant has not. Because the standard
spelling appears to be without hyphenation, unless we are
specifically quoting the registrant’s identification, we have
spelled the word as “makeup” in our opinion.
Ser No. 78663877
4
Reply brief, p. 2. However, the determination of
likelihood of confusion must be made on the basis of the
identification of goods set forth in the subject
application and cited registration. In re William Hodges &
Co., Inc., 190 USPQ 47 (TTAB 1976); see also, Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As the goods
are identified, the registrant’s goods are not limited to a
“dry cotton fiber pad.” Rather, the identification
encompasses not only dry pads, but pads that are pre-
moistened with makeup removing solution. Thus, even if we
treat makeup remover and makeup remover pads as different
items, the goods are the same in that they both are used
for the same purpose, to remove makeup, and both consist of
a makeup removing solution.
Further, even if we were to accept applicant’s
position that makeup remover can only be a liquid or gel
that is sold in a tube, and that makeup remover pads are
dry cotton, applicant’s and the registrant’s goods must be
considered complementary items, with the pads used to apply
the makeup remover to the eyes, eyelashes, etc. Thus, they
would be purchased by the same consumers for the same
purpose.
Ser No. 78663877
5
Applicant has argued that the goods are different
because they are made by a different manufacturing process,
asserting that cotton pads are manufactured in plants that
process natural fibers into cotton pads and the like, and
that such plants “are not configured to also manufacture
cosmetic liquids and gels.” Brief, p. 3. Applicant also
asserts that “the manufacture of cosmetic solutions
requires entirely different equipment and processes than
those used for processing natural fibers.” There are
several problems with this argument. First, a company can
be the source of goods even if it is not the actual
manufacturer of them. Consumers are aware that many
products are produced for a trademark owner by contract
manufacturers. Second, because makeup remover pads can be
pre-moistened with makeup remover, consumers are likely to
assume that the company that manufactures makeup remover
that is sold in a tube also manufactures makeup remover
that is used in pre-moistened pads, if both products were
sold under confusingly similar marks. Third, the evidence
of record shows that at least one company (Colose) sells
both makeup remover in a tube and eye makeup remover pads.
Ser No. 78663877
6
The factor of the similarity of the goods strongly
favors a finding of likelihood of confusion.4
We turn next to a consideration of the marks, noting
that when marks would appear on virtually identical goods
or services, as they do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). The marks are similar in appearance to the extent
that they both begin with the same two letters, and end
with an element which, because it is preceded by a hyphen
in both marks, creates a separate impression of OFF or
OFFS. We acknowledge that the marks differ in that
applicant’s mark contains the letter “Q” while the

4 The Examining Attorney also made of record a number of third-
party applications and registrations in order to show relatedness
of the goods, because third-party registrations which
individually cover a number of different items and which are
based on use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). However, third-party applications are evidence only
of the fact that they were filed. Further, only one of the
third-party registrations submitted by the Examining Attorney
lists both makeup remover and makeup remover pads. The Examining
Attorney may have been unable to discover additional
registrations because registrants treat an identification of
“makeup remover” to encompass “makeup remover pads” as well as
makeup remover lotions and gels. Whatever the reason for the
lack of a significant number of third-party registrations listing
makeup remover and makeup remover pads, we have not relied on
this single third-party registration in reaching our conclusion
that applicant’s goods and the registrant’s goods are related.

Ser No. 78663877
7
registered mark has “KE,” such that the first element in
applicant’s mark appears as MAQ and is MAKE in the
registered mark, and that the registrant’s mark has an
additional “S” at the end. While these letters create some
difference in appearance, that difference is not sufficient
to distinguish the marks. The test in assessing whether
there is a likelihood of confusion is not whether the marks
are distinguishable on the basis of a side-by-side
comparison. Sealed Air Corporation v. Scott Paper Company,
190 USPQ 106 (TTAB 1975). Under actual marketing
conditions, consumers do not necessarily have the luxury of
making side-by-side comparisons between marks, and must
rely upon their imperfect recollections. Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Therefore, we must consider the fallibility of memory over
a period of time.
The marks must be deemed virtually identical in sound.
There is no correct pronunciation of a trademark when the
trademark is not a recognized word. In re Teradata
Corporation, 223 USPQ 361, 362 (TTAB 1984) (“as we have
said many times, there is no ‘correct’ pronunciation of a
trademark”). The element “MAQ” in applicant’s mark MAQ-OFF
is not a word, and therefore, contrary to applicant’s
assertion that it must be “pronounced as ‘MACK’ or ‘MOQ’ as
Ser No. 78663877
8
the rules of the English, French or Spanish languages would
require,” reply brief, p. 1, it may be pronounced as
“MAKE,” the same as the first element in the cited mark.
Applicant’s unsupported assertion as to how “MAQ” would be
pronounced in French or Spanish has no bearing on how
consumers in the United States are likely to pronounce the
mark. Nor has applicant provided any support as to how
“MAQ” would be pronounced in English. Our own review of a
dictionary5 for words beginning with “Maq” discovered only
three entries, one being the name of the French underground
during World War II; the second being a word for a dense
growth of small trees and shrubs in the Mediterranean area
(and from which the name of the underground organization
was taken), and the third being an evergreen shrub or a
Chilean wine made from the berries of the shrub. These
three entries show that the particular words are pronounced
with the first syllable “mock.” However, one of the three
is clearly a French word and the other two are rather
arcane. Therefore, we cannot conclude, based on
applicant’s unsupported assertion and our review of
dictionary listings, that consumers in the United States

5 The American Heritage Dictionary of the English Language, ©
1970. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78663877
9
would pronounce MAQ-OFF as applicant asserts. With respect
to connotation, we agree with applicant that if consumers
see the MAQ portion of its mark as an arbitrary letter
string the mark will not have the same meaning as MAKE-
OFFS. However, because applicant’s goods are makeup
remover, consumers may view MAQ as a misspelling of “MAKE,”
and for them, the marks would have the same connotation.
See, for example, In re State Chemical Manufacturing Co.,
225 USPQ 687 (TTAB 1985) (FOM is the equivalent of FOAM).
Further, because the marks may be pronounced similarly
and because they have the same connotation, they convey the
same commercial impression.
Given that the goods are virtually identical, and
therefore a lesser degree of similarity is necessary to
support a conclusion of likely confusion, the du Pont
factor of the similarities of the marks favors a finding of
likelihood of confusion.
We also find the goods to be sold in the same channels
of trade. The Examining Attorney has submitted Internet
webpages that show a search for “Eye Makeup Remover” on
Yahoo!Shopping retrieved a number of make-up remover and
make-up remover pad products, including Almay Makeup
Remover, Joey New York Eye Makeup Remover, and Andrea EyeQ
Eye Makeup Remover Pads. http://shopping.yahoo.com. In
Ser No. 78663877
10
fact, the Andrea EyeQ makeup remover pads are shown on the
same webpage as the Almay makeup remover. Another search
on this same site, for “long lasting makeup removers”
retrieved, on the same webpage, Erno Laszlo makeup remover,
Interface makeup remover and Jason makeup remover pads,
while a second page lists Yves Saint Laurent makeup remover
lotion, Ponds makeup remover towelettes, Jason make-up
remover pads, and Nivea make-up remover, and a third page
of the same search shows Jason makeup remover pads, CM’s
makeup remover and Guerlain Issima makeup remover. A
third search, for eye makeup remover, on the website for
Make-Up USA, retrieved eye makeup remover and eye makeup
remover pads, both offered under the same trademark,
COLOSE. www.make-upusa.com Moreover, because makeup
remover and makeup remover pads are merely different forms
of the same item, which has the same purpose and would be
used by the same customers, they will be sold in the same
stores and are likely to be displayed in chose proximity.6

6 In its request for reconsideration applicant made the argument
that the channels of trade were different, contending that the
registrant’s goods are really cotton balls or pads and are
therefore sold as a first aid or health care product. Applicant
did not reiterate this argument in its brief, and therefore may
have realized its incorrectness, but because applicant stated in
its brief that it was reiterating its previous arguments, we
address it briefly. Applicant cannot mischaracterize the
registrant’s identified goods to change the likelihood of
confusion analysis to makeup remover versus first aid cotton.
Registrant’s goods are makeup remover pads, a cosmetic product,
Ser No. 78663877
11
This du Pont factor favors a finding of likelihood of
confusion.
The factor of the conditions of purchase also favors a
finding of likelihood of confusion. Makeup remover as
identified in applicant’s application and the makeup
remover pads identified in the cited registration are
consumer items that are likely to be purchased by the
general public, including adolescent girls and women of all
ages. Further, the Internet evidence shows that these
products are relatively inexpensive. The Andrea EyeQ
makeup remover pads are priced at $3.99; the Colose brand
eye makeup remover sells for $10.00, while the eye makeup
remover pads sell for $7.00. Consumers are not likely to
exercise a great deal of care in making these purchases.
Applicant has argued that “there is a crowded field of
‘off’ marks in the cosmetic industry and consumers are used
to taking extra time to distinguish them.” Brief, p. 4.
The only evidence applicant has submitted in support of
this argument is a printout from the USPTO’s TARR database.
Applicant states that there are 23 “‘live’ marks on the PTO
register that are comprised of the word ‘off’,’ or a
phonetic equivalent, that also list the word ‘remover’ in

not a first aid product, and they would be sold in the same
section of a store as makeup removers.
Ser No. 78663877
12
connection with makeup or cosmetics in the description of
goods.” Brief, p. 4. First, we point out that submitting
a listing from the TARR database is not an acceptable way
to make the registrations of record. However, the
Examining Attorney has treated the registrations as though
they were properly of record, and therefore we will
consider them for whatever probative value they have. That
value is very limited. Third-party registrations are not
evidence that the marks are in use. See, In re Albert
Trostel & Sons Co., supra. Therefore, they do not prove
applicant’s argument that consumers are used to seeing
“OFF” marks, or that they distinguish them based on other
elements in the marks. Since there is no evidence of
third-party use, that du Pont factor is neutral.
Third-party registrations can be used to show that a
particular term has been adopted by many companies, and
therefore that it has a meaning or significance in an
industry, such that less weight should be given to that
element. See Tektronix, Inc. v. Daktronics, Inc., 187 USPQ
588 (TTAB 1975). However, based on these registrations, we
cannot conclude that the word “OFF” in general has a
descriptive or suggestive meaning for all cosmetic
products. Many of the marks in the list submitted by
applicant do not even use “OFF” in a way that it would be
Ser No. 78663877
13
recognized as a separate term, e.g., ZAHAROFF; ALEXANDRA DE
MARKOFF; DFP DENISE FORTE-PATHROFF, M.D.; COFFEE BREAKER.
Nor can we determine, from the list that applicant has
presented, for what goods these marks are registered.
Although applicant has stated that the registrations are
for marks that list the word “remover” in connection with
makeup or cosmetics in the identification of goods, the
identification of goods of the various registrations is not
listed. We note that from the wording of the marks
themselves, some of them appear to be for non-cosmetic
items, e.g., MOTSENBOCKER’S LIFT OFF RUSTOFF; DUST-OFF.
Also, the registrations which do use OFF as a separate word
or element seem to have different meanings for that term,
e.g., POLISH OFF; GOOF OFF; KISS-OFF; COOL OFF; TAKE THE
DAY OFF; TIP OFF; OFF-BROADWAY; OFF YOU GO!.
We acknowledge that, as used in connection with a
makeup removing product, OFF has the suggestion of removing
or taking off makeup, but this meaning is the same for both
applicant’s and the registrant’s mark. Most importantly,
even giving OFF this suggestive significance, the
similarity between applicant’s and the registrant’s mark is
not confined to the element OFF. As we discussed
previously, there are also similarities between the first
Ser No. 78663877
14
elements of the marks, MAQ and MAKE, such that the marks as
a whole, MAQ-OFF and MAKE-OFFS, are similar.
Applicant has also asserted that the extent of
potential confusion is de minimis. Applicant appears to
base this position on its contention that “the Examining
Attorney’s strongest argument for possible confusion is
that Applicant’s mark might be mispronounced and,
therefore, sound like Registrant’s mark,” and “that
Applicant’s mark might be mispronounced is merely
theoretical.” Reply brief, p. 3. As we have previously
discussed, we do not think it merely theoretical that MAQ-
OFF could be pronounced as MAKE-OFF, and we have also found
many additional reasons that favor a finding of likelihood
of confusion. Further, because applicant’s and the
registrant’s products are relatively inexpensive general
consumer items that could be purchased without a
significant amount of care by everyone that wears makeup,
the number of people who could be confused is very great.
Therefore, this du Pont factor, too, favors a finding of
likelihood of confusion.
Neither applicant nor the Examining Attorney have
discussed any other du Pont factors. Because of this, and
because no evidence has been submitted on other factors,
we, too, have limited our discussion to these factors. To
Ser No. 78663877
15
the extent that any other factors are applicable, we must
treat them as neutral.
In conclusion, after considering all relevant du Pont
factors, we find that applicant’s mark for its identified
goods is likely to cause confusion with MAKE-OFFS for
makeup remover pads.
Decision: The refusal of registration is affirmed.