Kiss My Face

Trademark Trial and Appeal Board

Sep 10, 2004

No. 78145333 (T.T.A.B. Sep. 10, 2004)

Mailed: 9/10/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kiss My Face
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Serial No. 78145333
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Michael A. Cornman of Schweitzer Cornman Gross & Bondell
LLP for Kiss My Face.
John Dwyer, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
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Before Seeherman, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Kiss My Face, a New York corporation, has appealed
from the final refusal of the Trademark Examining Attorney
to register CLOSE ENCOUNTER as a trademark for “skin
moisturizing shaving cream, after shave lotion, body and
facial lotions, personal deodorants, facial scrubs, facial
cleansers, facial cream, liquid soaps for hand and face and
body, hair shampoos and hair conditioners, shower gels,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78145333
2
bath foam, and skin soap.”1 Registration has 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 ENCOUNTER, previously registered by Victoria’s
Secret Stores, Inc., for “face, hand, and body lotion; bath
and shower gel; talcum powder; face, body, and hand soap”2
and for “perfume and cologne,”3 that, if used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
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 Company, 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
1 Application Serial No. 78145333, filed July 18, 2002, and
asserting a bona fide intention to use the mark in commerce.
2 Registration No. 1892526, issued May 2, 1995; Section 8
affidavit accepted; Section 15 affidavit received.
3 Registration No. 1697308, issued June 30, 1992; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Ser No. 78145333
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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).
Turning first to the goods, applicant has conceded
that they are related. Reply brief, p. 4. In fact, the
goods are in part identical. Both applicant’s application
and cited Registration No. 1892526 include face and body
lotion, shower gels, and body and hand soap. Therefore,
they are presumed to travel in the same channels of trade
and be sold to the same classes of purchasers.
The evidence of record also shows that the remaining
goods in the application and the registrations are closely
related. The Examining Attorney has submitted numerous
third-party registrations which show that entities have
registered a single mark for the goods in applicant’s
application and the goods in the cited registrations. See,
for example, Reg. No. 2639711 for, inter alia, hair
shampoo, hair conditioner, hair gel, deodorant, cologne and
perfume; Reg. No. 2716551 for cologne, eau de toilette,
body lotion and shower gel; Reg. No. 2711388 for, inter
alia, bath and shower gel, hair shampoos, skin soap, and
bath foam, perfume, eau do toilette, body and face cream,
Ser No. 78145333
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hand cream, skim cleansing cream for body and face; Reg.
No. 2709436 for, inter alia, cologne, perfume, after-shave
moisturizers, soaps and after-shave lotion. 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).
In addition, the Examining Attorney has made of record
excerpts of articles taken from the NEXIS database which
refer to companies selling goods of the type listed in
applicant’s application and the cited registrations. See,
for example, the following:
Why shouldn’t Dad smell good, too?
Originating from Southern France, the
Provence Pour Les Hommes collection
from Baudelaire is just what he needs.
Available in two scents--Verlaine and
Green Tea--the collection includes
after-shave ($15 for 3.4 ounces), eau
de cologne ($15, 1.7 ounces),
shampoo/body wash ($12.50) and facial
scrub ($12.50).
“Asbury Park Press,” June 4, 2003
…Langer fragrances, which include
Wicked Wahine. Here’s a list of the
products they carry: Wicked Wahine
cologne mist ($9.89); perfume mist
($9.89); body soap bar with oatmeal,
coconut oil and kukui nut oil ($6.89);
body wash ($7.89); and hand and body
lotion ($7.89).
“Sacramento Bee,” June 4, 2003
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...cologne by Hugo Boss named after the
label’s chief designer.... There’s eau
de cologne spray ($53), a refill ($42),
after-shave lotion ($40), shower gel
($21), alcohol-free deodorant stick
($16)....
“Pittsburgh Post-Gazette,” May 18, 2003
Cosmetic company Elizabeth Arden has a
variety of green tea products,
including perfume, lotion, shampoo,
conditioner, bath salts and even
deodorant.
“The Augusta Chronicle,” May 13, 2003
In addition to the new perfume scent,
the Cashmere Mist line includes
shampoo, conditioner, hand cream and
body powder.
“Poughkeepsie Journal,” February 25,
2003
Although these stories are not evidence that the
companies listed actually sell the indicated goods or sell
them under a single mark, they do show that the public has
been exposed to such information, such that they would be
likely to assume that such goods emanate from the same
source if they were sold under the same or a confusingly
similar mark.
We turn, then, to a consideration of the marks,
keeping in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
Ser No. 78145333
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America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Moreover, the question is not whether marks can be
distinguished upon a side-by-side comparison, because 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).
In this case, applicant’s mark simply adds the word
CLOSE to the cited mark, ENCOUNTER. Because the second
word of applicant’s mark is identical to the registered
mark, there are obvious similarities in appearance and
pronunciation. Applicant argues that the marks have
different connotations because ENCOUNTER, when used in
connection with personal care items, suggests “two people
meeting or a chance encounter,” while CLOSE ENCOUNTER
suggests “an intimate get-together.” Brief, p. 6. We do
not agree. Although “CLOSE” in applicant’s mark provides
additional information as to the nature of the “ENCOUNTER,”
the meaning of “ENCOUNTER” remains the same, that of a
meeting.
Applicant also asserts that CLOSE ENCOUNTER has an
additional meaning that ENCOUNTER does not have, since it
brings to mind the motion picture “Close Encounters of the
Ser No. 78145333
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Third Kind.” At the same time, applicant acknowledges that
its mark “admittedly has nothing to do with science fiction
or the like.” Brief, p. 7. It is not clear to us that
CLOSE ENCOUNTER, when used for personal care products,
would bring to mind a motion picture involving contact with
extraterrestrials, especially since the term has the more
logical meaning, when used with such goods, of people
meeting or getting together. However, even if applicant’s
mark can be said to have a double entendre, obviously one
of the connotations of the mark is very similar to the
connotation of applicant’s mark. Thus, the connotations of
the marks, at least in one respect, are similar.
Further, the Examining Attorney has shown that
ENCOUNTER is a strong mark, in that there are no other
registrations for any ENCOUNTER marks for personal care
items in Class 3 (the class in which both applicant’s and
the registrant’s goods are classified). In view thereof,
we cannot say that the cited registrations should be
accorded a limited scope of protection.
Applicant has also argued that “retailers and/or
distributors of fragrances, skin care preparations and
associated goods, commonly use a well-known mark or house
mark in conjunction with the specific trademark of the
product, allowing consumers to easily identify the source
Ser No. 78145333
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thereof.” Brief, p. 9. We are not persuaded by this
argument. The mark in the cited registration is ENCOUNTER;
the mark for which applicant has applied is CLOSE
ENCOUNTER. No house mark in included in either mark, and
our determination of likelihood of confusion must be based
on a comparison of the marks as they appear in the cited
registrations and the application.
Applicant also asserts that the primary target group
for its goods and those of the registrant are female
purchasers, and that such purchasers “are known for their
sophistication with respect to fragrances, cleansers, etc.”
Brief, p. 9. First, there is nothing in the respective
identifications of goods which would limit their purchase
to women. On the contrary, applicant’s skin moisturizing
shaving cream and after shave lotion would seem to be
products with a particular appeal to men. Further, hair
shampoos and hair conditioners, shower gels, personal
deodorants and skin soap, listed in applicant’s
application, and such products as bath and shower gel,
talcum powder, face, body and hand soap, and cologne, which
are listed in the cited registrations, appear to us to be
Ser No. 78145333
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products which are bought and used by both genders.4
Further, because many of these products are relatively
inexpensive, e.g., skin soap, shampoo, skin moisturizing
shaving cream, liquid soaps for hands, they are not likely
to be purchased with great care or deliberation.
Considering all of the duPont factors on which there
is evidence, and in particular, the identity or closely
related nature of the goods, the overall similarity of the
marks, and the lack of deliberation with which purchases
are made, we find that the factors favoring a finding of
likelihood of confusion far outweigh any additional (as
opposed to different) connotation that applicant’s mark may
have.
Decision: The refusal of registration is affirmed.
4 Note the excerpt from the “Asbury Park Press” article, quoted
above, which specifically discusses a toiletries line for men
which includes eau de cologne, shampoo, after-shave and facial
scrub.