Jamie O’Banion

Trademark Trial and Appeal Board

May 6, 2011

No. 77843205 (T.T.A.B. May. 6, 2011)

Mailed: May 6, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jamie O’Banion
________

Serial No. 77843205
_______

Scott L. Harper of Harper Law Group PLLC for Woodtone
Industries USA.

Christopher Wells, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Holtzman, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Jamie O’Banion seeks registration on the Principal
Register of the standard character mark LASH ALLURE MD
(LASH disclaimed) for goods identified as “cosmetic
preparations, namely, eyelash and eyebrow preparations” in
International Class 3.1

1 Application Serial No. 77843205, filed October 7, 2009, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77843205
2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d),2 on the ground that
applicant’s mark, when used on the identified goods, so
resembles the registered marks for “cosmetics and
toilet preparations-namely, perfume” in International Class
3,3 ALLURE in typed form for “perfume, eau de toilette, body
lotion, and moisturizer” International 3,4 ALLURE HOMME in
typed form for “fragrances and toiletries, namely eau de
toilette, after shave, skin moisturizer, personal
deodorant, and shower gel for cleaning hair and body” in
International Class 3,5 ALLURE in typed form for “fragrance
and toiletries products, namely, soap and cleansing gel” in

2 The application had been approved for publication and then
jurisdiction was restored to the examining attorney, at which
point the examining attorney refused registration under Section
2(d). Applicant states that “the application was inexplicably
and arbitrarily withdrawn from publication.” While the USPTO
strives to issue all relevant refusals in the initial
examination, “if the USPTO discovers that a mistake made during
examination would result in issuance of a registration in
violation of the Trademark Act or applicable rules, the USPTO
must issue any necessary requirements or refusals, even if they
could or should have been previously raised.” TMEP Section
706.01 (7th ed. 2010). See also Last Best Beef LLC v. Dudas, 506
F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007); cf. In re
Sambado & Son Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997) (Board’s
determination on appeal is “limited to the correctness of the
underlying substantive refusal to register”).
3 Registration No. 635700 issued October 9, 1956, renewed. The
remaining listed goods are in brackets, indicating that they have
been deleted, and, thus, we have not considered them in making
our determination.
4 Registration No. 2025798 issued December 24, 1996, renewed.
5 Registration No. 2370933 issued July 25, 2000, renewed.
Serial No. 77843205
3
International Class 3,6 and ROUGE ALLURE in standard
characters (ROUGE disclaimed) for “cosmetics” in
International Class 3,7 as to be likely to cause confusion,
mistake or deception. Chanel Inc. is the listed owner for
all of the cited registrations.
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,
two key considerations are the similarities between the
marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We begin by considering the relationship between the
respective goods. The issue is not whether the goods will
be confused with each other, but rather whether the public
will be confused as to their source. Safety-Kleen Corp. v.
Dresser Indus. Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA

6 Registration No. 2598290 issued July 23, 2002, Section 8 and 15
accepted and acknowledged.

7 Registration No. 3234899 issued April 24, 2007.

Serial No. 77843205
4
1975). It is sufficient to find goods to be related where
the circumstances surrounding their marketing are such that
they would be encountered by the same potential purchasers
under circumstances that would give rise to the mistaken
belief that they originate from the same source. On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000). Finally, we must make our
determination based on the goods as they are identified in
the application and registration and not based on evidence
of their actual use. Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
As to Registration No. 3234899, the identification of
goods, “cosmetics,” encompasses applicant’s identification
of goods, “cosmetic preparations, namely, eyelash and
eyebrow preparations.” Thus, as to that registration, the
goods are legally identical. With regard to the remaining
registrations, the examining attorney argues that
registrant’s perfume, eau de toilette, body lotion,
moisturizer, soap, cleansing gel, after shave, personal
deodorant, and shower gel for cleaning hair and body are
“closely related personal care products.” Br. p. 7. In
support of this assertion, the examining attorney submitted
Serial No. 77843205
5
several third-party use-based registrations that include
applicant’s goods along with one or more of each of
registrant’s goods. See, e.g., Reg. No. 2899996 (eye
pencils, lash primer, eye brow pencils, eye brow fixer,
fragrances, moisturizing creams and gels, skin soaps,
deodorants, after shave gels); Reg. No. 3265668 (body
creams, body moisturizers, body washes, body soaps,
fragrances, mascara, deodorant, eyebrow pencils, eyelash
cream); and Reg. No. 3159918 (cleansing gel, body lotion,
foaming body wash, shampoo, eye pencils, eyelash
thickener). Third-party registrations may serve to suggest
that the goods listed therein are of a kind that may
emanate from a single source. In re Infinity Broad. Corp.,
60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
In addition, the examining attorney submitted website
printouts that show various types of cosmetics, including
eyebrow and eyelash preparations, and skincare products
and/or fragrances sold on the same site.
We find the record as a whole establishes that
registrant’s various personal care products (fragrances,
skincare, soaps, deodorant, etc.) are related and travel in
the same channels of trade as applicant’s goods, such that
when used in connection with a similar mark, confusion
Serial No. 77843205
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would be likely. Applicant simply argues that there is a
“marked dissimilarity” between applicant’s goods and
registrant’s goods. However, as applicant acknowledges the
issue is not whether the goods will be confused with each
other, but rather whether the public will be confused about
their source. Safety Clean, 186 USPQ 476. Clearly,
consumers are routinely exposed to these types of goods
coming from the same source. The cited registrations for
fragrances, moisturizers, soaps and cosmetics, and examples
of registrant’s website submitted by applicant and the
examining attorney, wherein fragrances, deodorants, soap
and makeup are sold on the same site under the same mark,
further support this conclusion.
In view of the above, we find that the goods are
closely related and travel in the same channels of trade.
Further, we find that the potential purchasers overlap
and include the general public. Applicant argues that the
relevant consumers are sophisticated. Specifically,
applicant asserts that:
It goes without saying that when it comes to
cosmetics, perfumes and skin care products,
consumers are very sophisticated and
discriminating when it comes to purchasing these
types of products. Even the average consumer
would note the different uses to which the
products represented by the Applicant’s mark LASH
ALLURE MD and the Cited Registrations pertain.
The average consumer would certainly distinguish
Serial No. 77843205
7
between eyelash and eyebrow preparations, as
opposed to the scented colognes, lipsticks,
powders and perfumes represented by the Cited
Registrations when seeking to purchase a specific
cosmetic item.

Moreover, the purchasers of the Applicant’s LASH
ALLURE MD eyelash and eyebrow cosmetic
preparations are searching for a product which
stimulates and enhances eyelash and eyebrow
growth, and therefore have a reasonably focused
need for that particular product, as discussed in
the consumer testimonials and web marketing
materials for the Applicant’s Mark and product
contained in the record before the Board. It is
likewise arguable that the common purchaser of
the Registrant’s colognes, perfumes, lipsticks
and powders has a reasonably focused need for
purchasing those types of products between which
the average consumer is capable of easily
discerning. Additionally, eyebrow and eyelash
preparations and colognes and perfumes are not
products that are purchased on a frequent basis,
meaning that a single purchase of the product
typically suffices for a long period of time. As
a result, the consumer of Applicant’s LASH ALLURE
MD product or the products represented by the
Cited Registrations would not indiscriminately
purchase just any product labeled with the term
ALLURE. Instead, whether it be cosmetic
preparations for eyelashes and eyebrows or
personal scents (colognes and perfumes), powders
and lipsticks, any of these products would more
than likely be selected after a reasonable
investigation by the consumer (i.e. the consumer
wants a product for stimulating and enhancing
their eyebrows and/or eyelashes vs. a new perfume
or cologne scent). Viewing the marks at issue in
the entireties, the differentiable products used
in connection therewith, and coupled with
discriminating consumers who would easily
differentiate between the products represented by
Applicant’s LASH ALLURE MD mark and those of the
Cited Registrations, the probability for the
likelihood of confusion to arise is remote, if
even possible.

Serial No. 77843205
8
Br. p. 11.
First, applicant again focuses on the ability to
distinguish between the goods rather than the source.
Second, applicant’s goods are not limited to only
preparations that stimulate eyelash and eyebrow growth.8
These “preparations” could simply be makeup.
Finally, applicant has not supported his assertion
that such goods are infrequent purchases or even, if so,
that infrequent purchasing, per se, raises the level of
care in the purchasing decision. We note that makeup,
including “eyelash preparations” and colognes are available
in drug stores and, to a more limited extent, grocery
stores. In short, there is nothing in the record to
support a finding that the goods and purchasing process are
of such a nature that purchasers would exercise unusual
care or otherwise would distinguish similar marks for
closely related goods. See, e.g., Electronic Design &
Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21
USPQ2d 1388 (Fed. Cir. 1992) (record confirms that
opposer’s services are expensive and are purchased only by

8 Octocom Sys. Inc., 16 USPQ2d at 1787 (“[T]he question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular
nature of an applicant’s goods, the particular channels of trade
or the class of purchasers to which sales of the goods are
directed”).
Serial No. 77843205
9
experienced corporate officials after significant study and
contractual negotiation and that the evaluation process
used in selecting applicant’s products requires significant
knowledge and scrutiny). Thus, we find that the level of
care taken by the average, let alone least sophisticated,
consumer of the identified goods does not serve to avoid
likely confusion. Moreover, as is frequently stated, even
if consumers are knowledgeable in a particular field that
does not necessarily mean that they are immune from source
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
We turn then to consider the similarity of the marks.
In making this determination we are cognizant of the
principle that the more closely related the goods are, the
less similarity in the marks is required to support a
conclusion of likelihood of confusion. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
It is well settled that marks must be considered in
their entireties, not dissected or split into component
parts and each part compared with other parts. It is the
impression created by the involved marks, each considered
as a whole, that is important. See Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992). However, “[t]hat a particular feature is
Serial No. 77843205
10
descriptive [or otherwise lacking in distinctiveness] ...
with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a
portion of a mark...” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Moreover, marks
presented in standard characters are not limited to any
particular depiction. The rights associated with a mark in
standard characters reside in the wording and not in any
particular display. In re RSI Systems, LLC, 88 USPQ2d 1445
(TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d
2012, 2015 (TTAB 1988); TMEP §1207.01(c)(iii) (7th ed. rev.
2010).
As to the two registered marks for ALLURE, applicant’s
mark incorporates the entirety of these marks. Moreover,
the stylization in the registered mark is not
sufficient to distinguish the otherwise identical word.
RSI Inc., 88 USPQ2d at 1885.9

9 The Board has traditionally discussed this analysis as
including all “reasonable displays” of a standard character mark.
In Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011), the Federal Circuit noted that
the “TTAB’s ‘reasonable manner’ standard limits the range of
marks considered in the DuPont analysis. If the registrant
complies with Section 2.52 of the Rules of Practice in Trademark
Cases and obtains a standard character mark without claim to ‘any
particular font style, size or color,’ the registrant is entitled
to depictions of the standard character mark regardless of font
style, size, or color, not merely ‘reasonable manners’ of
depicting its standard character mark. The consideration of only
‘reasonable’ manners of depicting a standard character mark is
Serial No. 77843205
11
As to the other registered marks, ALLURE HOMME and
ROUGE ALLURE, the strongest source-identifying element in
these marks is the word ALLURE, making it the more dominant
and most memorable element. The word HOMME is French for
“man” and merely describes the intended use of registrant’s
product for men and the word ROUGE is French for “red” and
merely describes the color of registrant’s cosmetics.
Similarly, the word ALLURE is the strongest source-
identifying element in applicant’s mark. The word LASH is
disclaimed and clearly describes a significant feature of
applicant’s “eyelash preparations.” The term MD is, at a
minimum, suggestive of a medicinal or healing effect of the
product.10 Thus, we find that ALLURE is also the strongest
source-identifying element in applicant’s mark, retaining

unsupported by anything other than TTAB practice. The TTAB
should not first determine whether certain depictions are
‘reasonable’ and then apply the DuPont analysis to only a subset
of variations of a standard character mark. The TTAB should
simply use the DuPont factors to determine the likelihood of
confusion between depictions of standard character marks that
vary in font style, size, and color and the other mark. As
explained in Phillips, illustrations of the mark as actually used
may assist the TTAB in visualizing other forms in which the mark
might appear.” Thus, rather than stating that we have considered
all reasonable displays, we have simply looked at the stylization
of the cited mark to determine if it is sufficient to distinguish
it from applicant’s mark, which necessarily includes, but is not
limited to, all “reasonable displays.”

10 We take judicial notice of the following dictionary definition
for MD: doctor of medicine. Random House Dictionary (2011)
retrieved at www.dictionary.com.

Serial No. 77843205
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the same meaning and commercial impression it has in
registrant’s marks, denoting, in applicant’s words, “the
action of trying to ‘entice or seduce’ ... or enhancing
one’s ‘sex appeal’.” Br. p. 7.
Applicant’s arguments based on registrant’s uses of
its ALLURE marks in conjunction with its house mark, are
not persuasive. First, the registered marks, the basis of
our comparison, do not contain the house mark. Second, in
general, the addition of a house mark to inherently
distinctive matter does not obviate likely confusion and
may in some instances increase likely confusion. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir.
2010) (ML likely to be perceived as a shortened version of
ML MARK LEES when used on the same or closely related skin-
care products). This case does not present an exception
where the marks in their entireties convey significantly
different commercial impressions or the common matter is
merely descriptive or diluted. Shen Mfg. Co. v. Ritz Hotel
Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ
and THE RITZ KIDS create different commercial impressions);
Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d
1645 (TTAB 2010), aff’d, 98 USPQ2d 1253 (Fed. Cir. 2011)
(CAPITAL CITY BANK held not likely to be confused with
CITIBANK).
Serial No. 77843205
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Thus, viewing the marks in their entireties,
applicant’s mark is very similar in sound, appearance,
connotation and commercial impression to each of the
registrant’s marks.
Applicant argues that the term ALLURE is weak in this
field and should be given only a limited scope of
protection. In support of his position, applicant
submitted definitions for the word “allure,” and examples
of third-party registrations. “Allure” is defined as “to
attract with something desirable” and “to be highly, often
subtly attractive” and “the power to attract.” March 8,
2010 Response, Exh. 3 printout from
dictionary.reference.com. While “allure” may be minimally
suggestive, it is more in the nature of an atmospheric
mark, imbuing a feeling. In any event, to the extent it is
closer to the suggestive part of the spectrum, it is not so
suggestive to affect the scope of protection to be
accorded.
Applicant asserts that “more than ninety U.S.
trademark registrations currently resid[e] on the Principal
Register for marks that include and use the term ALLURE, or
a foreign or phonetic equivalent.” However, only four (two
of which are owned by the same registrant) of applicant’s
third-party examples are for relevant goods, and, as to
Serial No. 77843205
14
each of those, the marks contain other matter that serves
to distinguish the marks more than the words LASH and MD in
applicant’s mark. The four third-party registrations are
listed below:
Registration No. 3800742 for the mark EDEN ALLURE
(and tree design) for body and beauty care
cosmetics; face creams for cosmetic use, body
soaps;

Registration No. 3802909 for the mark REJUVALLURE
for skin cream; and

Registration Nos. 3098592 and 3016825 for the
marks ALAUR SKIN SOLUTIONS and ALAUR for various
face, hand and body creams and lotions.

Moreover, prior decisions and actions of other
examining attorneys in registering different marks are not
binding on the Office. In re Sunmarks, Inc., 32 USPQ2d
1470, 1472 (TTAB 1994) (“[E]ach case must be decided on its
own merits based on the evidence of record. We obviously
are not privy to the record in the files of the registered
marks and, in any event, the issuance of a registration by
an Examining Attorney cannot control the result of another
case.”)
In conclusion, we find that because the marks are
similar, the goods are closely related or legally
identical, and the channels of trade and purchasers
overlap, confusion is likely between applicant’s mark LASH
ALLURE MD and the ALLURE and ALLURE-formative marks in the
Serial No. 77843205
15
cited registrations. To the extent there is any doubt, we
resolve it, as we must, in registrant’s favor. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.