K & N Distributors

Trademark Trial and Appeal Board

Jul 16, 2015

No. 86150854 (T.T.A.B. Jul. 16, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re K & N Distributors1
_____

Serial No. 86150854
_____

Matthew H. Swyers of The Trademark Company, PLLC,
for K & N Distributors.
Anne C. Gustason, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.

Before Bucher, Zervas and Greenbaum,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
K & N Distributors (“Applicant”) seeks registration on the Principal Register of
the mark NEOPLUS GEL in standard character form for “cosmetics” in
International Class 3.2 Applicant disclaimed the term “Gel.”
The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s

1 K & N Distributors is identified as a limited liability company in the original application.
2 Application Serial No. 86150854 claims Trademark Act § 1(b), 15 U.S.C. § 1051(b), as a
filing basis.
Serial No. 86150854
-2-
mark is likely to cause confusion or mistake or to deceive in view of Registration
No. 25824663 for the typeset4 word mark NEO PLUS for “all purpose preparations
for cleaning, washing and scrubbing, namely, face cleansing products, namely
cleansing gel, tonic lotion, scrub; products for face care, namely, day cream, night
cream, eye cream/gel, nourishing cream, anti-age/anti-wrinkle cream, serum, anti-
wrinkle eye cream, moisturizer, mask” in International Class 3.
When the refusal was made final, Applicant filed an appeal. Applicant and the
Examining Attorney both filed briefs. We affirm the refusal to register.
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a
likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 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, 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.”).

3 Registered June 18, 2002. Renewed November 13, 2012.
4 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to
replace the term “typed” drawing with “standard character” drawing.
Serial No. 86150854
-3-
We first consider the similarity or dissimilarity of the marks, comparing the
marks in their entireties as to appearance, sound, connotation and commercial
impression. Palm Bay Imports, 73 USPQ2d at 1992. “[T]he test is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods offered under the
respective marks is likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d
1715, 1727 (TTAB 2008).
The marks both begin with the term NEO followed directly by the term PLUS.
GEL in Applicant’s mark is a highly descriptive or generic term when used on the
identified “cosmetics,” and appropriately has been disclaimed. The addition of the
term GEL in Applicant’s mark therefore does not serve to distinguish the marks.
Thus, we find the marks similar in sound, meaning, appearance and commercial
impression. Applicant has conceded “the phonetic equivalence of NEOPLUS versus
NEO PLUS,” and “the highly similar nature of the … cited trademark” because of
the disclaimer of GEL.5
Applicant, however, submitted numerous third party registrations and argues
that “the term NEO has consistently been treated as weak with respect to similar
goods, [and] therefore consumers must rely on other factors, in this case the
addition of the word GEL to the mark … to be distinguished.”6 The argument is a
red herring, because the term PLUS also appears in the marks (and directly after

5 Applicant's Brief at 8, 4 TTABVUE 9.
6 Id.
Serial No. 86150854
-4-
the term NEO in both marks); and consumers will not look to GEL, which is a
highly descriptive or generic term for the goods identified in the application and
registration, to distinguish the marks. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (it is a well-established principle that, “in
articulating reasons for reaching a conclusion on the issue of likelihood 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.”). In addition, as the
Examining Attorney pointed out, evidence of weakness or dilution consisting solely
of third-party registrations is generally entitled to little weight in determining the
strength of a mark, because such registrations do not establish that the registered
marks identified therein are in actual use in the marketplace or that consumers are
accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1204 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009);
Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982).
Further, most of the third party registrations submitted by Applicant are not use-
based registrations and hence have very limited probative value.7

7 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 Association of the United States
Army, 85 USPQ2d 1264, 1270 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988).
Serial No. 86150854
-5-
In light of the foregoing, the du Pont factor regarding the similarity of the marks
weighs in favor of a finding of a likelihood of confusion.
We turn next to the similarity or dissimilarity of the goods. In determining
whether the goods are related, it is not necessary that the respective goods be
competitive, or even that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that the respective goods are
related in some manner, or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be encountered by the
same persons under circumstances that could give rise to the mistaken belief that
they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991).
It is settled that the question of likelihood of confusion must be determined
based on an analysis of the goods recited in Applicant’s application vis-à-vis the
goods recited in the cited registration, and we cannot read limitations into those
goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
There is a clear relationship between “cosmetics” and goods such as registrant’s
“face cleansing products, namely cleansing gel, tonic lotion, scrub,” which are used
to prepare the face for cosmetics, or to cleanse the face from cosmetics. In addition,
Serial No. 86150854
-6-
the record contains website evidence from (i) lushusa.com8 (offering skin treatments
and a link to “makeup”), and (ii) ulta.com (setting forth a “Line Smoother + Primer,”
and various makeup).9 Applicant has not argued that the goods are dissimilar in its
brief and is silent on the issue of the similarity or dissimilarity of the goods. The
du Pont factor regarding the similarity of the goods therefore favors a finding of
likelihood of confusion.
Turning to the similarity or dissimilarity of trade channels, Applicant argues
that Applicant’s and registrant’s trade channels differ, with Applicant’s cosmetic gel
offered in “make-up and cosmetics aisles of stores such as grocery stores and
pharmacies, and … our website” while registrant’s goods are offered in “specific
locations, namely physician offices and medical spas” and not online.10 There are no
trade channel restrictions in the identifications of goods, and, as noted earlier in
this decision, our determination is made based on the goods recited in the
application and the cited registration, and we do not read limitations into the
identifications. See Stone Lion Capital Partners, 110 USPQ2d at 1161. Applicant
maintains that its goods would be sold in the cosmetic aisles of stores such as
grocery stores and pharmacies,11 and we see no reason why registrant’s goods would
not be sold in the same locations.

8 The webpage is titled “LUSH Fresh Handmade Cosmetics.”
9 The apivita.com webpage offering Apivita brand (i) face mask and anti-wrinkle cream, and
(ii) “lip care.” The “lip care” products are depicted in different colors, but are identified by
flavors such as “black currant” and “pomegranate” and are indicated as for “Dry/Chapped
Lips.” The probative value of this evidence is hence questionable.
10 Applicant's Brief at 12; 4 TTABVUE 13.
11 Applicant's Brief at 12-13; 4 TTABVUE 13-14.
Serial No. 86150854
-7-
In addition, Applicant argues that “The blocking mark’s cosmetics [sic] are
designed to attract a very sophisticated [sic], namely, consumers visiting a medical
spa or a physician’s office for skin care needs. The goods under the blocking mark
are professional grade, as evidenced by Registrant’s website, and as such are
assumed to be more expensive than that of the cosmetics sold under the NEOPLUS
GEL mark … .” There is no evidence to support Applicant’s position and indeed the
face masks on lushusa.com are offered at $6.95. Such goods appear to be ordinary
consumer items subject to impulse purchases.
In balancing the relevant du Pont factors, all of which favor a finding of
likelihood of confusion or are neutral, we find that there is a likelihood of confusion
between Applicant’s mark NEO PLUS GEL for “cosmetics” and registrant’s mark
NEOPLUS for “all purpose preparations for cleaning, washing and scrubbing,
namely, face cleansing products, namely cleansing gel, tonic lotion, scrub; products
for face care, namely, day cream, night cream, eye cream/gel, nourishing cream,
anti-age/anti-wrinkle cream, serum, anti-wrinkle eye cream, moisturizer, mask.”
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.