Kiss My Face, LLCv.PYR Less Group, LLC

Trademark Trial and Appeal Board

Sep 29, 2015

No. 91209825 (T.T.A.B. Sep. 29, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
Kiss My Face, LLC
v.
PYR Less Group, LLC
________
Opposition No. 91209825
_______
Carrie A. Johnson of Fraser Clemens Martin & Miller LLC for Kiss My Face, LLC.
Christian D. Stewart of Burdett Morgan Williamson & Boykin LLP for PYR Less
Group, LLC.
_______
Before Zervas, Shaw and Hightower, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
PYR Less Group, LLC (“Applicant”) has filed an application to register the mark
TOUCH MY FACE, in standard character format, for “facial masks; non-medicated
serums for use on skin” in International Class 3.1 Kiss My Face, LLC (“Opposer”)
opposed registration, alleging a likelihood of confusion in view of Opposer’s
registrations and prior use of the mark KISS MY FACE, and variations thereof, for

1 Application Serial No. 85663155, filed June 27, 2012, based on Section 1(a) of the
Trademark Act, with a claim of first use anywhere and use in commerce since at least as
early as August 12, 2002.
Opposition No. 91209825
2
body care products. Applicant denied the salient allegations of the notice of
opposition.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the opposed application. In addition, the parties
introduced the following items into evidence, either by stipulation or by notice of
reliance:
A. Opposer’s Evidence
1. Dictionary definitions for the words “kiss” and “touch” from
www.merriam-webster.com.2
2. Copies of documents produced by Opposer during discovery
comprising advertising material, sales and marketing materials,
and Facebook pages displaying a variety of Opposer’s KISS MY
FACE facial care products as well as other personal care
products.3
3. Printouts from the Trademark Status & Document Retrieval
system (“TSDR”) for Opposer’s U.S. Registrations.4
4. Excerpts of the transcripts of the discovery deposition of
Applicant, via its owner, Dr. Roby Mitchell and Applicant’s
employee, Ms. Jodi Bytheway.5
5. Copies of Applicant’s Responses to Interrogatories, Document
Requests, and Requests for Admission.6
6. Copies of documents produced by Opposer during discovery in
this proceeding showing Opposer’s enforcement efforts.7

2 19 TTABVUE 4-14.
3 Id. at 15-91.
4 Id. at 92-238.
5 Id. at 239-261.
6 Id. at 262-284.
7 Id. at 285-325; 20 TTABVUE 2-58.
Opposition No. 91209825
3
7. Copies of documents produced by Applicant during discovery
showing the price of Applicant’s TOUCH MY FACE products
and sales of these products from 2008 to 2013.8
8. Testimony deposition of Opposer’s Chief Marketing Officer, Ms.
Jean Fufidio with accompanying Exhibits.9
B. Applicant’s Evidence
1. Dictionary definitions for the words “kiss” and “touch” from
www.merriam-webster.com.10
2. Excerpts of the transcripts of the Fed. R. Civ. P. 30(b)(6)
discovery depositions of Applicant, via its owner, Dr. Roby
Mitchell and Applicant’s employee, Ms. Jodi Bytheway.11
3. Copies of documents produced by Applicant during discovery
showing Applicant’s TOUCH MY FACE products.12
4. Copies of documents produced by Applicant during discovery
showing Applicant’s Facebook page, website and marketing
materials.13
5. Copies of the Applicant’s and Opposer’s Responses to
Interrogatories, Document Requests, and Requests for
Admission.14
6. Printouts from TSDR of Opposer’s U.S. Registrations.15
7. A printout from TSDR of the specimen submitted with Opposer’s
trademark application for U.S. Registration No. 4636349, ONE
KISS IS ALL IT TAKES.16

8 20 TTABVUE 59-65; 21 TTABVUE.
9 23 TTABVUE and 24 TTABVUE.
10 25 TTABVUE 8-17.
11 Id. at 18-54.
12 Id. at 55-61.
13 Id. at 62-72.
14 Id. at 73-118.
15 Id. at 119-257.
16 Id. at 258-259.
Opposition No. 91209825
4
8. A printout from TSDR of a number of third-party U.S.
Registrations for marks comprising the term “kiss,” “face,” or
“touch.”17
9. Screen shots of search results from the Trademark Electronic
Search System (“TESS”) for the terms “kiss,” “face,” or “touch,”
in International Class 3.18
10. Copies of documents produced by Opposer during discovery
comprising advertising material, sales and marketing materials,
and Facebook pages displaying a variety of Opposer’s KISS MY
FACE products.19
11. A screen shot of Opposer’s Facebook page promoting Opposer’s
“Kiss Across America” contest and describing the contest.20
12. Copies of confidential documents produced by Opposer during
discovery showing Opposer’s enforcement efforts regarding
third-party marks.21
II. Evidentiary Objections
Opposer moves to strike Applicant’s exhibits 13, 14, and 15 (which are
referenced in item no. 9 above) consisting of screen shots of search results from
TESS for the terms “kiss,” “face,” or “touch,” in International Class 3. The TESS
search results were not subject to the Stipulation of the Parties.22 The exhibits list
both live and dead registrations and applications but provide no information
regarding goods or services, register, basis, or other relevant information. Opposer
argues that filing a printout of TESS search results “is not sufficient to make third

17 Id. at 260-352.
18 Id. at 353-422.
19 Id. at 423-431; 26 TTABVUE 1-26.
20 26 TTABVUE 27-30.
21 19 TTABVUE 285-325; 20 TTABVUE 2-58.
22 18 TTABVUE.
Opposition No. 91209825
5
party registrations listed therein of record in an inter parties proceeding.”23
Applicant, in its brief, did not respond to Opposer’s objection.
We decline to strike the lists inasmuch as they are properly of record under a
notice of reliance as official records. TBMP § 704.07 (2015). However, “a party may
not make a third-party registration of record simply by introducing a list of third-
party registrations that includes it . . . or by referring to the registration in its brief
or pleading.” TBMP § 704.03(b)(1)(B); Black & Decker Corp. v. Emerson Elec. Co., 84
USPQ2d 1482, 14894 (TTAB 2007) (“Submitting lists of third-party registrations . . .
is not an acceptable way to make such registrations . . . of record.”). Moreover, a
mere list of marks, including both live and dead registrations and applications with
no other registration information, is of no probative value. See Nat’l Fidelity Life
Ins. v. Nat’l Ins. Trust, 199 USPQ 691, 694 n.5 (TTAB 1978) (list of registrations
without goods and services and other relevant information “has no probative
value.”). Thus, we deny Opposer’s motion to strike, but we nevertheless have given
the exhibits no consideration.
III. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999). Opposer’s standing to oppose registration of Applicant’s mark is
established by its pleaded registrations, which the record shows to be valid and
subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222

23 Opposer’s Br. at 7.
Opposition No. 91209825
6
F.3d 943, 55 USPQ2d 1842, 1848, 1844 (Fed. Cir. 2000). In addition, because
Opposer’s pleaded registrations are of record, priority is not an issue with respect to
the goods and services covered by Opposer’s pleaded registrations. Penguin Books
Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services, the first two du Pont factors. 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.”).
Opposer made of record the following eleven registrations for KISS MY FACE
formative marks:
Reg. No.
Date
Issued Mark Goods and Services
1 1513297 11/22/1988 KISS MY FACE
Personal care products--namely,
shampoos, soaps, creme rinses, skin
toners and skin lotions (Class 3)
2 1991868 08/06/1996 KISS MY FACE
Retail shops featuring clothing, and
personal care products, namely
shampoos, soaps, creme rinses, powders,
skin toners and skin lotions (Class 42)
Opposition No. 91209825
7
3 2301324 12/21/1999 KISS MY FACE
Non-medicated lip balms, cosmetics,
namely, lipsticks, foundations,
conditioners, bath and body gels, facial
creams, hand lotions, deodorants, soaps,
shaving creams, skin lotions, skin toners
and facial and body lotions (Class 3)
4 2706187 04/15/2003 KISS MY FACE Clothing, namely, t-shirts (Class 25)
5 3120784 07/25/2006 KISS MY FACE WHITENING
Personal Care Products, Namely,
Toothpastes (Class 3)
6 3590613 03/17/2009 KISS MY FACE MOISTURE SOAP
Personal care products, namely, soaps
(Class 3)
7 4200053 08/28/2012 KISS MY FACE SHIMMER Non-medicated tinted lip balms (Class 3)
8 4229593 10/23/2012 KISS MY FACE
Personal care products, namely, all
purpose liquid, hand, bar and cosmetic
soaps, non-medicated alpha-hydroxy acid
lotions, bar soaps, bath and shower gels,
body lotions, body creams, body balms,
body wash, cosmetics, deodorants for
personal use, exfoliating cleansers, facial
cleansers, facial lotions, facial creams,
and facial gels, facial masks, foaming
soaps, non-medicated foot creams and
foot scrubs, shampoos, hair conditioners,
hair detanglers, hair styling gels, hand
lotions and hand creams, liquid soaps,
moisturizing shower gel, mouthwash,
non-medicated lip balms, shaving
creams, skin toners, non-medicated sun
care products, and toothpaste and
toothpaste gel (Class 3)
9 4268625 01/01/2013

All purpose soaps, bar soaps, bath and
shower gels, body lotions, body washes,
cosmetics, foaming soaps, hand lotions,
body creams and body balms, liquid
soaps, non-medicated lip balms, personal
care products, namely, facial creams, foot
creams, hand creams, deodorants for
personal use, hair conditioners, hair
detanglers, hair styling gels,
mouthwashes, breath fresheners,
shampoos, shaving creams, toothpastes,
non-medicated sun care preparations
and non-medicated sunscreen
preparations (Class 3)
Opposition No. 91209825
8
10 4450641 12/17/2013

Personal care products, namely, all
purpose soaps, moisturizing soaps,
alpha-hydroxy acid face and body lotions,
bar soaps, bath and shower gels, body
lotions, body creams, body balms, body
wash, cosmetics, tinted lip gloss, lip tint,
tinted moisturizers, deodorants for
personal use, exfoliating cleansers, facial
cleansers, facial lotions, facial creams,
facial gels, facial masks, foaming soaps,
non-medicated foot creams, foot scrubs,
shampoos, hair conditioners, hair
detanglers, hair styling gels, hand
lotions, hand creams, liquid soaps,
moisturizing shower gel, mouthwash,
non-medicated lip balms, shaving
creams, moisturizing shaving creams,
skin toners, non-medicated sun care
preparations, sun tanning preparations,
toothpaste, and toothpaste gels (Class 3)
11 4450642 12/17/2013

Personal care products, namely, all
purpose soaps, moisturizing soaps,
alpha-hydroxy acid face and body lotions,
bar soaps, bath and shower gels, body
lotions, body creams, body balms, body
wash, cosmetics, tinted lip gloss, lip tint,
tinted moisturizers, deodorants for
personal use, exfoliating cleansers, facial
cleansers, facial lotions, facial creams,
facial gels, facial masks, foaming soaps,
non-medicated foot creams, foot scrubs,
shampoos, hair conditioners, hair
detanglers, hair styling gels, hand
lotions, hand creams, liquid soaps,
moisturizing shower gel, mouthwash,
non-medicated lip balms, shaving
creams, moisturizing shaving creams,
skin toners, non-medicated sun care
preparations, sun tanning preparations,
toothpaste, and toothpaste gels (Class 3)

We focus our analysis on Registration No. 4229593 for the mark KISS MY FACE
in standard characters for a variety of personal care products, including facial
masks, because the mark and the goods in this registration are the closest to
Applicant’s mark and goods. If we do not find a likelihood of confusion with this
Opposition No. 91209825
9
registered mark and its associated goods, then there would be no likelihood of
confusion with the marks in the other pleaded registrations. See In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Fame of the KISS MY FACE mark
We begin with the du Pont factor that requires us to consider the fame of
Opposer’s mark. Fame, if it exists, plays a dominant role in the likelihood of
confusion analysis because famous marks enjoy a broad scope of protection or
exclusivity of use. A famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992).
We also note that fame is not an all-or-nothing proposition. “Fame for purposes
of likelihood of confusion is a matter of degree that ‘varies along a spectrum from
very strong to very weak.’” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (quoting Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1375 (Fed. Cir. 2005)).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread
critical assessments, and through notice by independent sources of the products
identified by the marks, as well as the general reputation of the products and
Opposition No. 91209825
10
services. Bose, 63 USPQ2d at 1305-1306 and 1309. Although raw numbers of
product sales and advertising expenses may have sufficed in the past to prove fame
of a mark, raw numbers alone may be misleading. Some context in which to place
raw statistics may be necessary (e.g., the substantiality of the sales or advertising
figures for comparable types of products or services). Bose, 63 USPQ2d at 1309.
Finally, because of the extreme deference that we accord a famous mark in
terms of the wide latitude of legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the duty of the party asserting
that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Opposer introduced the evidence below to demonstrate the fame of its marks.
Much of Opposer’s evidence regarding its income, advertising and sales was
designated as confidential and filed under seal and, therefore, we refer to such
evidence only in general terms.
1. Opposer has used its KISS MY FACE mark in commerce for personal care
products since at least as early as 1981.24 Opposer owns eleven U.S. registrations
for KISS MY FACE marks dating back to 1988.25
2. For at least the past five years Opposer’s gross sales of KISS MY FACE
personal care products in the U.S. have been substantial, and they have been
growing steadily each year.26

24 Fufidio Dep., 23 TTABVUE 7.
25 19 TTABVUE 92-238.
26 Fufidio Dep., 23 TTABVUE 12-14; 24 TTABVUE 2-3.
Opposition No. 91209825
11
3. Opposer’s KISS MY FACE products are sold nationally in well-known retail
outlets, including Whole Foods, Kroger, Walgreen's, and Target.27
4. Opposer’s advertising budget for its KISS MY FACE marks is significant and
encompasses a variety of advertising media, such as print and electronic media,
including social media.28
5. Opposer’s KISS MY FACE goods have received favorable critical assessments
from a number of national magazines, including, Vogue, Women’s Health, Redbook,
The Oprah Magazine, and Prevention.29
6. Opposer maintains an Internet web site located at www.kissmyface.com
which offers its goods for sale and which features extensive information about
Opposer’s KISS MY FACE products. Opposer’s goods also are sold online at
Amazon.com and Drugstore.com.30
7. Opposer maintains a Facebook page, which prominently features the KISS
MY FACE products and has nearly 100,000 followers. Opposer also maintains a
mailing list of approximately 95,000 email subscribers, who receive email and
letters from Opposer several times a month about KISS MY FACE products.31
8. In a brand-awareness survey of female consumers in the natural health and
beauty aids category, approximately fifty-seven percent of participants indicated an
awareness of KISS MY FACE products. Opposer’s products compared favorably in

27 Id. at 24 TTABVUE 9.
28 Id. at 23 TTABVUE 20-22.
29 Id., 23 TTABVUE 22-28.
30 19 TTABVUE 25-79; Fufidio Dep., 23 TTABVUE 11.
31 Fufidio Dep., 23 TTABVUE 28.
Opposition No. 91209825
12
brand recognition to other “natural” brands such as BURT’S BEES, AVEENO, and
TOM’S OF MAINE.32 Applicant has not objected to the survey, and we find it to be
credible.
Based on the foregoing evidence, we find that KISS MY FACE is a strong mark.
Accordingly, the strength of the KISS MY FACE mark for personal care products
“casts a long shadow which competitors must avoid.” See Kenner Parker Toys, 22
USPQ2d at 1456-57 (“A strong mark . . . casts a long shadow which competitors
must avoid.”). This du Pont factor favors a finding of likelihood of confusion.
B. Similarity of the goods, channels of trade, and classes of purchasers
We turn next to the du Pont factors involving the relatedness of the goods,
channels of trade, and classes of purchasers. We base our evaluation on the goods as
they are identified in the application and registration. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).
Both Applicant’s and Opposer’s identifications of goods include “facial masks.”
The goods therefore are in part identical, and Applicant does not dispute this. In
analyzing the similarity of the goods, it is sufficient for a refusal based on likelihood
of confusion that relatedness is established for any single item encompassed by the
description of goods in the application. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).

32 24 TTABVUE 13.
Opposition No. 91209825
13
Applicant does not dispute the attendant presumption that the channels of trade
and classes of purchasers are the same. In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in an application and/or
registration, identical goods are “presumed to travel in the same channels of trade
to the same class of purchasers”) (quoting Hewlett-Packard, 62 USPQ2d at 1001);
see also Stone Lion, 110 USPQ2d at 1161; In re Linkvest, 24 USPQ2d 1716, 1716
(TTAB 1992).
The du Pont factors relating to similarity and nature of the goods and similarity
of established, likely to continue channels of trade favor a finding of likelihood of
confusion.
C. Conditions under which and to whom sales are made, i.e. “impulse” vs.
careful, considered purchases
Next we consider the degree of care under which the goods are likely to be
purchased, e.g., whether on impulse or after careful consideration. Purchaser
sophistication or a high degree of care may tend to minimize likelihood of confusion.
Conversely, impulse purchases of inexpensive items or a low degree of care may
tend to have the opposite effect. Palm Bay, 73 USPQ2d at 1695.
Opposer argues that the parties’ goods are relatively low-priced and subject to
impulse buying by “general consumers who, with little care or prior knowledge
might purchase such products.”33 Applicant argues that the conditions of sales of
the parties’ goods disfavors a likelihood of confusion because its goods are
“marketed as high-end natural beauty products to sophisticated consumers

33 Opposer’s Br., p. 35.
Opposition No. 91209825
14
concerned with their personal beauty products and such consumers carefully
consider and research natural beauty products.”34
The record shows that the Applicant’s TOUCH MY FACE products sell for
between $21.75 and $43.45, with the facial mask selling for $40.00 for a two ounce
container.35 Opposer’s goods generally sell for between $5.99 and $21.99 with its
facial mask selling for approximately $15.00, also for a two ounce container.36
Although most of Applicant’s products cost more than Opposer’s we do not find the
difference to be particularly significant, especially as the respective identifications
of goods are not restricted as to price.
Applicant’s contention that purchasers of Opposer’s products are “sophisticated
consumers” is not supported by any evidence.37 Both Applicant’s and Opposer’s
goods are sold online, in pharmacies, and in health food or “natural stores” to what
must be presumed are ordinary consumers.38 L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1441 (TTAB 2012) (Cosmetics and personal care products tend to be relatively
inexpensive and may be subject to impulse purchase.). Given the relatively low cost
and the nature of the goods, the parties’ facial masks may be subject to impulse
purchase and frequent replacement. See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d
1629, 1640-41 (TTAB 2007). “When products are relatively low-priced and subject to
impulse buying, the risk of likelihood of confusion is increased because purchasers

34 Applicant’s Br., pp. 35-36.
35 25 TTABVUE 62-72.
36 23 TTABVUE 30; 19 TTABVUE 25.
37 Applicant’s Br., p. 35.
38 Bytheway Dep., 25 TTABVUE 45-46; Fufidio Dep., 23 TTABVUE 10-11.
Opposition No. 91209825
15
of such products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C.
Becton, 54 USPQ2d at 1899.
The factors relating to conditions of sale weigh in Opposer’s favor.
D. Number and nature of similar marks in use on similar goods
This du Pont factor focuses on the usage by third-parties of similar marks in
connection with related goods or services in the marketplace. Such evidence
demonstrates that customers have become conditioned by a plethora of similar
marks to distinguish between different marks on the basis of minute distinctions.
Palm Bay, 73 USPQ2d at 1694.
Applicant made of record a number of third-party marks for cosmetics or facial
care products containing the terms “kiss,” “touch,” or “face” including, inter alia:39
KISS KISS-A-LICIOUS
LOVE & KISSES KISS ME IN THE GARDEN
KISS ME KISS IN THE CITY
SHINY KISS NATURAL KISS
BEST KISS SECRET KISSES
KISS OF HOPE ISLAND KISS
HEALTHY KISS TROPICAL KISS
KISS & TELL KISS-A-PEEL
KISS THE EARTH NATURALS KISS THE EARTH MINERALS
KISS NEW YORK and Design DR. KISS
KISS OF FIRE THE KISS
TREASURED KISS LOVE MY FACE
MYFACE MYFACE.COSMETICS
TOUCH MY SKIN FOR EXTERNAL
USE ONLY and Design

Applicant argues that “existence of numerous third-party registrations and
third-party marks incorporating the word KISS used in relation to personal

39 25 TTABVUE 260-352.
Opposition No. 91209825
16
cosmetic goods shows that Opposer’s KISS MY FACE marks are weak, or at least
that Opposer’s KISS MY FACE marks are neither particularly strong nor entitled
to broad protection.”40 We find that this evidence is unpersuasive.
As an initial matter, it is well settled that third-party registrations alone are of
limited probative value for demonstrating weakness of a mark because they are not
evidence that the registered marks are in use. See AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); Nike Inc. v. WNBA Enters.
LLC, 85 USPQ2d 1187, 1200 (TTAB 2007). Where the record includes no evidence
about the extent of third-party uses, the probative value of such evidence is
minimal. Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1561 (Fed. Cir. 2001).
Notwithstanding the lack of evidence of use, we do not find these third-party
registrations to be especially relevant. The third-party registrations that include the
term “KISS” create commercial impression that are quite different and
distinguishable from Opposer’s KISS MY FACE mark. Accordingly, the third-party
“KISS” marks do not show that the mark KISS MY FACE as a whole is weak for
personal care products. The three registrations for marks including the term “my
face” are more on point but we cannot conclude that three such marks establishes a
crowded field of “my face”-formative marks for similar personal care products. Nor
do we find any of the third-party marks to be as similar to the pleaded mark KISS
MY FACE as is Applicant’s TOUCH MY FACE.

40 Applicant’s Br., p. 32.
Opposition No. 91209825
17
In view of the foregoing, Applicant has not demonstrated that there are similar
marks in use on similar goods.
E. Nature and extent of any actual confusion and length of time and conditions
under which there has been concurrent use without evidence of actual
confusion
A showing of actual confusion would of course be highly probative, if not
conclusive, of a likelihood of confusion. The opposite is not true, however. The lack
of evidence of actual confusion carries little weight. See J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before us is
the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v. Kappa Books
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual confusion not
required). Given Applicant’s relatively modest sales of its TOUCH MY FACE
products in only Texas and California prior to selling the goods online in 2011,41 we
cannot find that the absence of evidence of actual confusion supports Applicant’s
argument that confusion is not likely.
F. Similarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In

41 21 TTABVUE; 25 TTABVUE 45-46.
Opposition No. 91209825
18
comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Further, “[t]he proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721. The proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the marks. Winnebago
Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980).
In terms of sound, TOUCH MY FACE and KISS MY FACE are similarly
constructed, with the same number of words, syllables and cadence, and both end
with the identical words “MY FACE.”
In terms of connotation or meaning, the first word of each mark comprises a
verb, “TOUCH” or “KISS,” which suggests a command or instruction to kiss or touch
someone’s face. According to a definition of record, the word “kiss” is defined as a
type of touching:
Definition of KISS42
transitive verb
1 : to touch with the lips especially as a mark of affection or greeting

42 Merriam-webster.com, 25 TTABVUE 9.
Opposition No. 91209825
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2 : to touch gently or lightly

This similarity in meaning between “touch” and “kiss” results in marks with similar
connotations.
Applicant argues that the marks are dissimilar because the “dominant, distinct
elements TOUCH and KISS differ in appearance, sound, connotation and
commercial impressions in the eyes of consumers” and because the term MY FACE
is a “weak, descriptive element.” 43 We disagree.
The issue is not whether “touch” and “kiss” are different words; the issue is
whether TOUCH MY FACE and KISS MY FACE, are similar when considered in
their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Clearly, “touch” and “kiss” are different words, but they are synonyms. When
they are combined with MY FACE they create similar connotations and commercial
impressions, i.e, physical contact with the face. Regarding the strength of MY
FACE, we do not find this phrase to be as weak as Applicant argues. The term
“face” may be weak for facial care products, but, as discussed above, we find that
MY FACE, when combined with “touch” or “face,” creates a unitary suggestion or
command to the consumer to kiss or otherwise touch someone’s face.
Accordingly, the overall similarity of the marks in sound, connotation and
commercial impression is such that there is reasonable likelihood of purchasers
attributing identical products sold thereunder to a single source. This du Pont factor
favors a finding of a likelihood of confusion.

43 Applicant’s Br., p. 22, 26.
Opposition No. 91209825
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G. Balancing the factors
Taking into account the strength of Opposer’s mark, that the goods are in part
identical and presumed to move in the same channels of trade and be sold to the
same classes of consumers, and because the marks are similar, we find that
Applicant’s mark for “facial masks” and “non-medicated serums for use on skin” is
likely to cause confusion with Opposer’s mark for a variety of goods including “facial
masks.”

Decision: The opposition is sustained and registration to Applicant is refused.