Kiss My Face Corp.

Trademark Trial and Appeal Board

Sep 10, 2003

No. 76007654 (T.T.A.B. Sep. 10, 2003)

Mailed: Paper No. 13
September 10, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kiss My Face Corporation
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Serial No. 76/007,654
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Michael A. Cornman of Schweitzer Cornman Gross & Bondell
for Kiss My Face Corporation.
David C. Reihner, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Simms, Hanak and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Kiss My Face Corporation [applicant] seeks to
register, on the Principal Register, the mark SILKY SOFT
for goods identified as “facial lotions, facial soaps, hair
conditioning rinses, shampoos, liquid hand soaps, and
shaving creams,” in International Class 3. Applicant has
asserted, as the basis for its application, that it has a
bona fide intention to use the mark in commerce for the
identified goods.
This Opinion is Not
Citable as Precedent of
the TTAB
Ser No. 76/007,654
2
The examining attorney has refused registration on the
ground that there would be a likelihood of confusion among
consumers if applicant’s mark were used for the identified
goods, in view of the prior registration of SOF’N SILKY and
SOFT’N SILKY, both registered to the same entity for goods
identified as “non-medicated baby powder,” in International
Class 3.1 When the refusal of registration was made final,
applicant appealed.
Applicant and the examining attorney have filed
briefs. Applicant did not request an oral hearing.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
two key considerations are the similarities of the marks
and the similarities of the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
1 Registration no. 1,254,221 (SOF’N SILKY), registered October
18, 1983, and listing February 1973 as the date of first use and
first use in commerce; registration no. 1,257,289 (SOFT’N SILKY),
registered November 15, 1983, and listing February 1978 as the
date of first use and first use in commerce. For each
registration, a Section 8 affidavit has been accepted and a
Section 15 affidavit has been acknowledged.
Ser No. 76/007,654
3
Turning first to the goods, we note that even if goods
identified in an application and registration are not
competitive, there may still be a likelihood of confusion,
when similar marks are used in conjunction therewith, if
such goods are related in some manner and/or if the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under conditions that would give rise to the mistaken
belief that the goods emanate from or are in some way
associated with the same source or sponsor. See In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984), and
cases cited therein.
In the case at hand, we find the goods related for
purposes of the likelihood of confusion analysis. While
applicant earlier argued that its products “are strictly
cosmetics, products clearly not intended to be used on or
in connection with babies” (response to first office
action), we note that its goods in the subsequently amended
identification include “facial soaps” and “shampoos”
without restriction as to suitability for adults or
infants. Thus, we must consider the listing of these items
to encompass soaps and shampoos for use on infants as well
as adults. See In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Indeed, the second
Ser No. 76/007,654
4
DuPont factor expressly mandates consideration of the
similarity or dissimilarity of the services as described in
an application or registration”). Moreover, applicant does
not argue, and we do not believe that it reasonably can,
that baby powder is only for use on babies.
Turning to the marks, we note that applicant relies
heavily on two cases wherein marks with essentially
transposed terms were permitted to coexist on the register,
despite goods and/or services that were held to be
commercially related for likelihood of confusion purposes.
We consider each of these cases and their lessons, to frame
our consideration of the marks involved in this case.
In In re Akzona Inc., 219 USPQ 94 (TTAB 1983), the
marks were SILKY TOUCH, which the applicant sought to
register for “synthetic yarns,” and TOUCH 'O SILK, which
was already registered for “men's dress shirts, sport
shirts and pajamas.” In that case, the Board found the
goods to be commercially related in that the clothing items
could be made of the yarns and might then even be
advertised as having been made from the yarns.2 On the
other hand, the Board found that the marks were different
2 The Board noted that, in an earlier inter partes case, an
applicant seeking to register NORLYN for panty hose and hosiery
was opposed by a party using ORLON for synthetic fibers and which
had advertised to ultimate consumers of hosiery the benefits of
Ser No. 76/007,654
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in sound and appearance and, even more significantly,
created different commercial impressions, because SILKY
TOUCH meant "silky to the touch" while TOUCH O' SILK
suggested registrant's clothing products “contain a small
amount of silk.” (It would appear that the Board
considered TOUCH to have a different connotation in each
mark, i.e., one meaning the physical act of touching
something, and the other meaning a "bit of" something).
Finally, in finding no likelihood of confusion, the Board
relied on not just the different commercial impressions of
the marks, but also on the fact that, although it had found
the goods "commercially related" they were specifically
different.
In In re Best Products Co., Inc., 231 USPQ 988 (TTAB
1986), the marks were BEST JEWELRY (the words being set
forth in distinctly different styles of lettering), which
the applicant sought to register for “retail jewelry store
services,” and JEWELERS' BEST, which had previously been
registered for “men's and ladies' bracelets and watch
bracelets, sold separately from the watches.” The Board
noted that the registrant’s goods and the applicant’s
services clearly were related for purposes of the
stockings made of such fibers. See E. I. Du Pont de Nemours and
Co. v. Norlyn Oy, 174 USPQ 405 (TTAB 1972).
Ser No. 76/007,654
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likelihood of confusion analysis. Nonetheless, noting that
the "primary concern" in cases involving transposed marks
is that consumers with fallible recall of the marks might
make mistaken purchases, the Board noted that such was not
a concern in a case involving services and goods, for one
would not purchase a product when looking for a service or
a service when looking for a product.
The Board concluded that the only potential type of
confusion would be as to source or sponsorship (i.e.,
prospective purchases would not be likely to make mistaken
purchases). The Board found that this type of confusion
was not likely to occur because of the different commercial
impressions created by the involved marks. Specifically,
it noted that BEST was a house mark and already registered
for retail store services that encompassed the sale of
jewelry; that BEST JEWELRY was not unitary (as it would be
if it were perceived as a laudatory mark), because it would
be perceived as the coupling of house mark and generic name
of goods (each term being set forth in markedly different
type). Thus, the Board found that applicant’s mark would
be perceived as expressing two distinct facts: first, it
was a BEST store, and second, it was a jewelry store. On
the other hand, the Board found that JEWELERS' BEST would
Ser No. 76/007,654
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be perceived as creating the impression of jewelers'
personally selected pieces of high quality.
While the Board found no likelihood of confusion in
the Best Products case, it noted that it was a close case;
and it was careful to note that transposed marks can result
in likelihood of confusion even when the goods are not the
same but, rather, are only closely related, when the marks
create the same commercial impression. To underscore the
point, the Board noted an earlier decision in which it
found contemporaneous use of JEWELMASTERS PALM BEACH for
“retail jewelry store services” and MASTER JEWELER’S
COLLECTION for “jewelry—namely, rings” to create a
likelihood of confusion, specifically because the marks,
although involving a transposition, both evoked the “master
jeweler” impression. See In re Jewelmasters, Inc., 221
USPQ 90 (TTAB 1983).
We find the case at hand distinguishable from the two
cases on which applicant relies. First, while the goods
are not competitive, they are complementary and likely may
be found if not on the same shelves, in the same sections
of retail stores such as groceries and pharmacies. In
addition, they are the types of goods that consumers might
expect to be marketed by a single producer. In this
regard, we note that the examining attorney has made of
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record six registrations based on use of the marks in
commerce that list in their identifications products such
as applicant’s and baby powder.3 Second, in the case at
hand, we do not find the transposition of terms to result
in two marks with different commercial impressions.
Rather, applicant’s mark and the two registered marks
create the same commercial impression, i.e., that of
products that leave the user with skin or hair feeling soft
as silk. We find this situation more akin to the
Jewelmaster case than those cases on which applicant has
relied.
Even if applicant is correct in arguing that the marks
will be visually and aurally different, they will have the
same commercial impression. We need not find similarity in
each of the elements of the “sound, appearance or meaning”
trilogy to find that marks are similar for purposes of the
likelihood of confusion analysis. See In re Lamson Oil
Co., 6 USPQ2d 1041, 1042 (TTAB 1988).
We are not persuaded that we should find no likelihood
of confusion because of applicant’s argument that there are
hundreds of marks in International Class 3 that use either
3 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).
Ser No. 76/007,654
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silk or soft, or variations thereof. Significantly,
applicant has not argued that there is even one other mark
in the class that combines both silk or silky and soft.
Finally, we note that the registered marks have been
on the register for decades and applicant is a newcomer who
had the opportunity to select a mark that was unlike
registrant’s marks. Indeed, it had a duty to do so for, as
the examining attorney has noted, even highly suggestive or
“weak” marks are entitled to be protected against the
registration by a subsequent user of a similar mark for
closely related goods. See King-Kup Candies, Inc. v. King
Candy Co., 288 F.2d 944, 129 USPQ 272 (CCPA 1961); and The
Superior Electric Co. v. Frequency Technology, Inc., 197
USPQ 180 (TTAB 1977). Moreover, it is well settled that,
if there is any doubt in a case involving a refusal under
Section 2(d), it is to be resolved in favor of the
registrant and against the applicant who had an opportunity
to select a mark that would avoid creating confusion.
Decision: The refusal of registration under Section
2(d) of the Lanham Act is affirmed.