Kjaer Weis, Inc.

Trademark Trial and Appeal Board

Oct 29, 2020

88204602 (T.T.A.B. Oct. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kjaer Weis, Inc.
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Serial No. 88204602
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Marcus S. Harris of Taft Stettinius & Hollister LLP for Kjaer Weis, Inc.

Jesse M. Nelman, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Kuhlke, Bergsman, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Kjaer Weis, Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark KW for “cosmetics,” in International Class 3.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it

1 Application Serial No. 88204602 was filed on November 25, 2018 by Kirsten Kjaer Weis, an
individual, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on her
claimed first use of the mark and first use of the mark in commerce at least as early as
September 9, 2010. She assigned the application to Applicant on April 9, 2020 under an
assignment recorded in the United States Patent and Trademark Office (“USPTO”) on April
21, 2020 under Reel/Frame 6920/0387.
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so resembles the three registered marks shown below, which are owned by the same
individual (“Registrant”), as to be likely, when used in connection with the goods
identified in the application, to cause confusion, to cause mistake, or to deceive:

for “Cosmetic Products, namely, Foundations, Pressed Face Powers, Eye Shadows,
Make-up Removers, Lip liners, Cheek Blushes, Lipsticks, Body Scrubs, Body Masks,
Bath Salts, Mascaras, Body Splashes, Bath Gels, Body Powders, Skin Creams, Body
Lotions, Nail Polishes, Body Soaps, Perfumes, Skin Cleansers, Eye liners, Eyebrow
Pencils, Hair Shampoos, Hair Conditioners and Essential Oils for Personal Use,” in
International Class 3;2

2 The cited Registration No. 2774005 issued on October 14, 2003 and has been renewed.
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for “Cosmetic Products; namely, Foundations, Pressed Face Powders, Eye Shadows,
Make-up Removers, Lip Liners, Cheek Blushes, Lipsticks, Body Scrubs, Body Masks,
Bath Salts, Mascaras, Body Splashes, Bath Gels, Body Powders, Skin Creams, Body
Lotions, Nail Polishes, Body Soaps, Perfumes, Skin Cleansers, Eye liners, Eyebrow
Pencils, Hair Shampoos, Hair Conditioners and Essential Oils for Personal Use ,” in
International Class 3;3 and

for “Make-up Removers, Lip Liners, Cheek Blushes, Lipsticks, Body Scrubs, Body
Masks, Bath Salts, Mascaras, Body Splashes, Bath Gels, Body Powders, Skin
Creams, Body Lotions, Nail Polishes, Body Soaps, Perfumes, Skin Cleansers, Eye
liners, Eyebrow Pencils, Hair Shampoos, Hair Conditioners and Essential Oils for
Personal Use,” in International Class 3.4

3 The cited Registration No. 2873980 issued on August 17, 2004 and has been renewed.
4 The cited Registration No. 2894837 issued on October 19, 2004 and has been renewed.
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When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. The appeal is fully briefed.5 We affirm
the refusal to register.
I. Record on Appeal and Evidentiary Issues6
The record on appeal consists of Applicant’s specimens of use and the following
materials submitted during prosecution:
 Pages from the USPTO’s electronic databases regarding the cited
registrations, made of record by the Examining Attorney;7
 The declaration of Applicant’s principal and assignor Kirsten Kjaer Weis
(“Kjaer Weis Decl.”), made of record by Applicant;8
 Third-party webpages showing the sale of various types of cosmetics under
the same marks, made of record by the Examining Attorney;9
 A Wikipedia entry entitled “Cosmetics,” dictionary definitions of “cosmetic,”
and pages from the websites of the U.S. Food and Drug Administration and

5 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
6 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) database.
7 February 26, 2019 Office Action at TSDR 2-10; August 28, 2019 Office Action at TSDR 2-
10. The Examining Attorney unnecessarily made the cited registrations of record twice.
8 August 26, 2019 Response to Office Action at TSDR 8-9.
9 August 28, 2019 Final Office Action at TSDR 11-137; March 23, 2020 Denial of Request for
Reconsideration at TSDR 2-133.
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the Health Science Authority regarding cosmetics, made of record by the
Examining Attorney;10 and
 Pages from the USPTO’s electronic databases regarding Applicant’s
Registration No. 4153624 of the mark KW (stylized) for “cosmetics,” made
of record by the Examining Attorney.11
Applicant also attached to its appeal brief nine exhibits consisting of pages from
various publications purporting to show that Applicant’s “products have been
featured in a number of well-known publications,” 13 TTABVUE 3, 14-129 (Ex. 1); a
copy of the certificate of registration for Applicant’s Registration No. 4153624 for the
stylized mark for cosmetics, id. at 130-32 (Ex. 2); copies of the certificates
of registration for other registrations owned by Applicant, id. at 133-39 (Ex. 3);
webpages regarding various awards won by Applicant’s cosmetics, id. at 140-56 (Exs.
4-6), webpages regarding various celebrities who have been associated with
Applicant’s products, id. at 157-83 (Exs. 7-8), and social media pages reviewing or
featuring Applicant’s products. Id. at 184-86 (Ex. 9).
In his brief, the Examining Attorney objects to almost all of the attachments.12 He
argues that “the evidentiary record in an application should be complete prior to the
filing of an appeal,” 15 TTABVUE 5, that Applicant “had three prior opportunities to

10 August 28, 2019 Final Office Action at TSDR 138-75.
11 March 23, 2020 Denial of Request for Reconsideration at TSDR 134-35. Ms. Kjaer Weis
assigned the registration to Applicant on April 9, 2020 under an assignment recorded in the
USPTO on April 21, 2020 under Reel/Frame 6920/0387.
12 The Examining Attorney notes that he “previously made Registration No. 4153624 of
record” and “does not object to applicant’s inclusion of that registration.” 15 TTABVUE 5 n.3.
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submit the untimely evidence and failed to do so,” id., and that the “inclusion of such
evidence for the first time on appeal prejudices the examining attorney by precluding
prior review and response.” Id. He “requests that the Board disregard it.” Id.
Applicant does not respond to the Examining Attorney’s objections in its reply brief.
We sustain the objections.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that “the record in an
application should be complete prior to the filing of an appeal” and “[e]vidence should
not be filed with the Board after the filing of a notice of appeal.” “‘The evidence
submitted with Applicant’s appeal brief that Applicant did not previously submit
during prosecution . . . is untimely and will not be considered. ’” In re Medline Indus.,
Inc., 2020 USPQ2d 10237, *2 (TTAB 2020) (quoting In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1744 (TTAB 2018), aff’d, 777 F. App’x (Fed. Cir. 2019)).
II. Analysis of Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of the likelihood of confusion under Section 2(d) is based
on an analysis of all probative facts in the record that are relevant to the likelihood
of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for
which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
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Two key DuPont factors in every Section 2(d) case are the first two factors
regarding the similarity or dissimilarity of the marks and the goods or services,
because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
Applicant argues that “[i]f the dissimilarity of the marks makes it unlikely for
confusion to result from use of the mark, the other du Pont factors do not need to be
considered,” 13 TTABVUE 6, and devotes most of its appeal brief, id. at 8-12, and
almost all of its reply brief, 16 TTABVUE 3-8, to the first DuPont factor.13 Applicant
also briefly discusses the fourth DuPont factor, the “conditions under which and
buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing,”
DuPont, 177 USPQ at 567, 13 TTABVUE 12-13, and the eighth DuPont factor, the
“length of time during and conditions under which there has been concurrent use
without evidence of actual confusion,” DuPont, 177 USPQ at 567. 13 TTABVUE 7-8.
We will confine our DuPont analysis to the mark in cited Registration No. 2873980
(the “’980 Registration”). If we find a likelihood of confusion as to that mark for any
of the goods identified in the ’980 Registration, we need not find it as to the marks

13 In its reply brief, Applicant argues without support that the registrant’s “KW term is not
famous and is not entitled to a wide latitude of legal protection . . . .” 16 TTABVUE 5. Without
evidence, we cannot make any finding on this issue. Moreover, because the Examining
Attorney is not expected to submit evidence regarding the fame of the cited mark, this factor
is usually treated as neutral in ex parte proceedings. See generally TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) Section 1207.01(d)(ix) (Oct. 2018) and cases cited therein.
Serial No. 88204602
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and goods in the other cited registrations. Conversely, if we do not find a likelihood
of confusion as to the mark in the ’980 Registration, we would not find it as to the
other cited marks, one of which is registered for slightly narrower goods and the other
of which contains additional literal elements. In re St. Julian Wine Co., 2020 USPQ2d
10595, *3 (TTAB 2020) (citing In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010)).
A. Similarity or Dissimilarity of the Goods and Channels of Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir 2018) (quoting DuPont, 177 USPQ at 567); see also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed.
Cir. 2014). “Apparently conceding the issue, Applicant did not address these du Pont
factors in its brief, so we offer only a brief explanation of our conclusion” on them. In
re Morinaga K.K., 120 USPQ2d 1738, 1740 (TTAB 2016).
“We begin with the identifications of goods and services in the registration and
application under consideration.” In re Country Oven, Inc., 2019 USPQ2d 443903, *5
(TTAB 2019). The goods identified in the application are “cosmetics.” The goods
identified in the ’980 Registration are “Cosmetic Products; namely, Foundations,
Pressed Face Powders, Eye Shadows, Make-up Removers, Lip Liners, Cheek Blushes,
Lipsticks, Body Scrubs, Body Masks, Bath Salts, Mascaras, Body Splashes, Bath
Serial No. 88204602
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Gels, Body Powders, Skin Creams, Body Lotions, Nail Polishes, Body Soaps,
Perfumes, Skin Cleansers, Eye liners, Eyebrow Pencils, Hair Shampoos, Hair
Conditioners and Essential Oils for Personal Use .” By definition, “cosmetics” are
“cosmetic products,” the general class of goods identified in the ’980 Registration, and
the “cosmetics” identified in the application encompass each of the specific “cosmetic
products” enumerated in the ’980 Registration. “In view of the identity of the recited
‘cosmetics,’ there is no need for us to further consider the relatedness of the goods .”
In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2012). The goods are identical,
and “the second DuPont factor thus strongly supports a finding of a likelihood of
confusion.” Medline Indus., 2020 USPQ2d 10237 at *4.
Because the goods identified in the application and the ’980 Registration are
“identical as to ‘cosmetics,’ we must presume that the channels of trade and classes
of purchasers of ‘cosmetics’ are the same as to these goods.” FabFitFun, 127 USPQ2d
at 1672 (citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012)). “The third DuPont factor thus also strongly supports a finding of a likelihood
of confusion.” Medline Indus., 2020 USPQ2d 10237 at *4.
B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these
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elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s,
126 USPQ2d at 1746 (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
The proper test regarding similarity “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.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks and citation omitted)). “The proper perspective on which the
analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, llc, 127
USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
Because the marks are used “on substantially identical goods, ‘the degree of
similarity necessary to support a conclusion of likely confusion declines.’” Double Coin
Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019). See also Viterra,
101 USPQ2d at 1912 (citing Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)). As discussed above, the goods at
issue are “cosmetics” and “cosmetic products,” without any restrictions or limitations
as to channels of trade, classes of purchasers, or price points, so the average customer
is an ordinary consumer.
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1. Summary of Arguments
a. Applicant’s Arguments14
Applicant argues that its standard character mark “is sufficiently dissimilar from
the cited marks to preclude a likelihood of confusion.” 13 TTABVUE 5. Applicant
contends that “[c]omparing the entire marks side-by-side or seriatim, it is clear that
Applicant’s mark is distinctive,” id. at 8, because a “highly unusual and distinctive
design dominates all three of the cited marks, namely a large and bold image of a bird
sitting on a spilled bottle of liquid with drips and a puddle of the liquid,” id., and that
the “only respect in which there is any similarity at all to the applicant’s mark is in
a highly-stylized script in the form of a monogram, with the letters connected to one
another in a manner that makes the lettering appear like a flourish rather than
letters.” Id. at 9. Applicant claims that its “specimens of record underscore the vast
dissimilarity between the monogram presentation of lettering in the cited marks and
the applied-for marks.” Id. Applicant displays one of its specimens as shown below:

Id.

14 Because we focus on the mark in the ’980 Registration, we do not summarize Applicant’s
arguments directed specifically to the marks in the other cited registrations.
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Applicant further argues that the Examining Attorney “improperly focused on the
initials KW separately from the entirety of the cited marks,” id., and that he
compared “only the KW design element in each of the cited marks with KW letters in
Applicant’s mark.” Id. at 10. According to Applicant, the “Examining Attorney has
determined that a likelihood of confusion exists based solely on the fact that
Applicant’s mark is a standard character mark and that Applicant could present its
mark in the ‘identical ‘matronly appearance’ of registrant’s marks.’” Id. Applicant also
argues that it is “untenable to assume that purchasers view the cited marks in a
shorted [sic] form, and there is no evidence in the record to support” the Examining
Attorney’s assertion that Applicant’s mark “is ‘likely to appear to prospective
purchasers as a shortened form of registrants’ marks.’” Id.
Finally, with respect to sound, and connotation and commercial impression,
Applicant argues that the stylized elements in the cited marks “create substantive
difference in the sound, connotation and commercial impression of the cited marks
from Applicant’s mark,” and that “[e]ven if improper weight is given to the KW
element of the cited marks, any similarities between the sound of registrant’s stylized
KW letters and Applicant’s KW letters is immaterial” because the “stylized letters in
the cited marks are both visual and oral indicia” and the “Board must review them
in the context in which they occur.” Id. at 12. Applicant argues that “relevant
purchasers of the cited marks’ goods do not simply hear the sound ‘KW’ when
purchasing cosmetic products. Instead, those purchasers see and hear the cited
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marks in their entirety – including with the highly stylized depiction of a bird and
the letters ‘K’ and ‘W.’” Id.
In its reply brief, Applicant argues that the Examining Attorney “summarily
concludes that the KW in Registrant’s marks is the dominant feature and bases his
likelihood of confusion finding on the fact that Applicant’s mark and a portion of the
cited marks share the same two letters.” 16 TTABVUE 4. Applicant acknowledges
that “while both Applicant’s mark and the cited marks contain the term KW, the term
is hardly prominent in Registrant’s marks, nor does it create a prominent commercial
impression in Registrant’s marks.” Id. at 5. Applicant notes that “‘[t]here is no general
rule as to whether letters or designs will dominate in composite marks; nor is the
dominance of letters or design dispositive of the issue.’” Id. at 6 (quoting In re
Electrolyte Labs. Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)).
Applicant concludes that
Registrant’s stylized KW is also not the dominant portion
of either the ‘837 Mark or the ‘980 Mark. The KW term
depicted in the ‘837 and ‘980 Marks does not stand apart
from the other design elements. Instead, it is secondary to
the stylized representation of a bird standing on dripping
fountain pens. It is this unusual and highly stylized
depiction that creates a distinct and separate commercial
impression in the ‘837 and ‘980 Marks that is likely to stay
with consumers.
Id. at 7.
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2. The Examining Attorney’s Arguments15
The Examining Attorney argues that the fact “[t]hat the marks begin with the
same letters—‘KW’—is particularly important because consumers are generally more
inclined to focus on the first word, prefix, or syllable in any trademark.” 15 TTABVUE
7. He claims that because the marks contain the identical “first and dominant letters
‘KW’ on which consumers will focus their attention, consumers will mistakenly
believe that applicant’s mark identifies another product offering of registrant’s ‘KW’
brand. This is particularly true here where applicant may present its standard
character mark in the same manner of display as registrant’s marks.” Id.
The Examining Attorney argues that Applicant’s “mark does not create a distinct
commercial impression from the registered marks because it consists solely of the
identical initial and dominant lettering ‘KW’,” id. at 8, and that “[w]hile registrant’s
marks include design elements consisting of a highly stylistic and abstract image of
a bird and a dropper, it is not these elements on which consumers will rely when
calling for the marks. Consumers will recall and use the more readily identifiable and
dominant literal element ‘KW’.” Id. He concludes that
The letters “KW” are the dominant feature in applicant’s
mark because they are the sole feature. The letters “KW”
are the dominant feature in registrant’s marks because
they are the first letters in the marks and the sole literal
element in Registration Nos. 2873980 and 2894837. The
design elements in registrant’s marks are of less
consequence because it is the literal element of the marks
that leaves a greater impression upon purchasers, that will

15 As with Applicant’s arguments, we do not summarize the Examining Attorney’s arguments
directed specifically to the marks in the cited registrations other than the ’980 Registration.
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be remembered by them, and that will be used by them to
refer to or request the goods.
Id. at 9-10.
The Examining Attorney further argues that Applicant’s “standard character
mark may be presented in the same manner of display as registrant’s marks,” and
that “registrant’s presentation of its marks in stylized characters does not avoid
likelihood of confusion with applicant’s mark in standard characters.” Id. at 9.
3. Analysis of Similarity or Dissimilarity of the Marks
The involved marks must be considered in their entireties, but “in articulating
reasons for reaching a conclusion on the issue 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.” Detroit Athletic Co., 128 USPQ2d at 1050 (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). As discussed
above, Applicant and the Examining Attorney disagree sharply about the relative
weight to be given the letters and designs in the cited composite marks, so we will
begin by determining the dominant portion of the mark in the ’980 Registration,
which we reproduce again below for ease of reference in following our analysis:

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In Viterra, the Federal Circuit held that “in the case of a composite mark
containing both words and a design, ‘the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed.’” Viterra, 101 USPQ2d
at 1908 (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983)). But the court also “cautioned that there is no general rule that the letter
portion of the mark will form the dominant portion of the mark,” id. (citing Electrolyte
Labs., 16 USPQ2d at 1240), holding that composite marks “must be considered on a
case-by-case basis.” Id.
In Electrolyte Labs., the Federal Circuit reversed the Board’s conclusion that
confusion was likely between the composite marks shown below, both for a dietary
potassium supplement, because the element K+ was the dominant portion of both
marks:16

(applicant Electrolyte’s mark)

16 The court noted that the “letter ‘K’ in both marks is the chemical symbol for potassium.”
Electrolyte Labs., 16 USPQ2d at 1239.
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(the cited mark)
The court held that the “nature of stylized letter marks is that they partake of both
visual and oral indicia, and both must be weighed in the context in which they occur .”
Id. at 1240 (citing Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204
USPQ 697, 699 (CCPA 1980)). The court noted that in Georgia-Pacific, the CCPA
“observed that even if the letter portion of a design mark could be vocalized, that was
not dispositive of whether there would be likelihood of confusion,” id., and that “a
stylized letter design [cannot] be treated simply as a word mark.” Id. (citing In re
Burndy Corp., 300 F.2d 938, 133 USPQ 196, 197 (CCPA 1962)). The Electrolyte Labs.
court
conclude[d] that the TTAB erred in its dominant focus on
the K+ in both marks, to the substantial exclusion of the
other elements of both marks. Electrolyte ’s mark is a
composite of which the design is a significant feature
thereof. The EFF in the registrant’s mark is also
significant. Although the symbols and abbreviations can be
pronounced, they are not identical, and the design of the
marks is substantially different. We conclude that
Electrolyte’s mark, viewed as a whole, serves to distinguish
its goods from those of others.
Id.
We find that the stylized letters KW in the mark in the ’980 Registration are
qualitatively different from the letters in the marks in Electrolyte Labs., and that the
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stylized letters KW should be given greater weight than the surrounding design
elements in the comparison of the involved marks. The letters KW in the mark in the
’980 Registration appear in the center of the composite mark in what Applicant calls
“highly stylized script in the form of a monogram,” 13 TTABVUE 9,17 and separate
and apart from the design elements. By virtue of its nature and positioning, the KW
monogram is intended to be recalled and vocalized, and it is more likely than what
Applicant calls the highly abstract “two birds siting on a dripping fountain pen,” 16
TTABVUE 5, “to make a greater impression upon purchasers, to be remembered by
them, and to be used by them to request the goods.” In re Aquitaine Wine USA, LLC,
126 USPQ2d 1181, 1184 (TTAB 2018) (citing Viterra, 101 USPQ2d at 1908). We find
that the KW monogram is the dominant element of the mark in the ’980 Registration,
and turn now to the required comparison of the marks in their entireties, giving
greater weight in that comparison to the KW monogram in the mark in the ’980
Registration than to the design elements in the mark.
With respect to the similarity or dissimilarity of the marks in appearance,
Applicant appears to acknowledge that its standard character KW mark could be
depicted in various forms, 13 TTABVUE 11, but argues that we cannot consider the
possible depiction of its standard character mark in the manner in which the letters
KW are displayed in the mark in the ’980 Registration because such a display is not
a “reasonable manner for Applicant to depict its own KW mark.” Id. at 10-11.
According to Applicant, such use “would run counter to how Applicant has used its

17 The letters “KW” are the initials of Kathy Walkine, the owner of the cited mark.
Serial No. 88204602
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own stylized KW mark for the last 10 years,” and for Applicant “to use its mark in a
confusingly similar way to the cited marks would serve no business purpose and
eviscerate the brand equity, value and goodwill that Applicant has established in its
KW mark.” Id. at 11. Applicant suggests that in considering the manners in which its
standard character mark may be depicted, the Board should consider only Applicant’s
specimens of use and the display of the letters KW in Registration No. 4153624, id.,
because it “is not reasonable for Applicant to depict its KW mark in a way that
deviates from its own Registration No. 4,153,624 for the purposes of using a depiction
that is confusingly similar to the cited marks.” Id.
In Aquitaine Wine, the applicant made a similar argument that “the Viterra
decision requires that the Board must consider only reasonable variations in which
[the applicant’s standard character mark] could be depicted, and that the Examining
Attorney’s position that the Registrant’s mark could be presented in the same manner
of display as Applicant’s is legally impossible (as it would be copyright infringement
of the artwork).” Aquitaine Wine, 126 USPQ2d at 1186 (internal quotations and
quotation marks omitted). The Board disagreed, explaining that the Federal Circuit
has “rejected the ‘reasonable manners’ test as ‘unduly narrow’ and endorsed a
standard that ‘allows a broader range of marks to be considered in the DuPont
analysis when a standard character mark is at issue.’” Id. (quoting Viterra, 101
USPQ2d at 1910). The Board held that “we must consider that the literal elements of
the mark (the words and the letters) may be presented in any font style, size or color,
including the same font, size and color as the literal portions of [Registrant’s] mark.”
Serial No. 88204602
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Aquitaine Wine, 126 USPQ2d at 1186 (emphasis added).18 Accordingly, we must
assume that the letters KW in Applicant’s mark may be displayed not only in the
manners in which Applicant has previously displayed them, but also in the stacked
presentation and stylized font of their counterparts in the KW monogram in the mark
in the ’980 Registration. Indeed, “the fact that [Applicant] has already adopted one
stylized variation on its unstylized [KW] mark might well lead customers to assume
that other variations have a similar origin.” Textron, Inc. v. Maquinas Agricolas
“Jacto” S.A., 215 USPQ 162, 164 (TTAB 1982).
Applicant argues that the letters KW do “not stand apart from the other design
elements,” but are “secondary to the stylized representation of a bird standing on
dripping fountain pens,” and that it “is this unusual and highly stylized depiction
that creates a distinct and separate commercial impression in the . . . ‘980 Mark[ ]
that is likely to stay with consumers.” 16 TTABVUE 7. We disagree. Contrary to
Applicant’s suggestion that we “[c]ompar[e] the entire marks side-by-side or
seriatim,” 13 TTABVUE 5, the marks “must be considered . . . in light of the fallibility
of human memory’ and ‘not on the basis of side-by-side comparison.’” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando

18 The Board also held that “when we are comparing a standard character mark to a word +
design mark for Section 2(d) purposes, we will consider variations of the depictions of the
standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters,
numbers, or any combination thereof.’” Aquitaine Wine, 126 USPQ2d at 1187 (emphasis in
original) (citing Citigroup Inc. v. Capital City Bank Grp., 637 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011) and Viterra, 101 USPQ2d at 1909). As a result, we cannot assume use
of the design elements in the mark in the ’980 Registration.
Serial No. 88204602
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Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977)).
Accordingly, we must compare the marks from the standpoint of a consumer with
a “general rather than specific impression” of the mark in the ’980 Registration,
i.am.symbolic, 127 USPQ2d at 1630, who separately encounters Applicant’s mark.
“An individual relies on the recollection of the various marks that he or she has
previously seen in the marketplace,” In re Information Builders, Inc., 2020 USPQ2d
10444, *6 (TTAB 2020), and “more frequently than not, such recollection is not
enhanced with minute details or specific characteristics of the marks, but is
determined by an overall or general impression of the many and various marks that
exist in the marketplace.” Id. at *6-7. A consumer with a “general rather than specific
impression” of the mark in the ’980 Registration, which is dominated by the KW
monogram, who later separately encounters Applicant’s KW mark displayed in the
same monogram is not likely to distinguish the marks ’ appearances because
Applicant’s monogramed KW mark is not accompanied by “two birds siting on a
dripping fountain pen.” 16 TTABVUE 5. We find that the marks are similar in
appearance when considered in their entireties.
With respect to sound, a “design is viewed, not spoken,” Electrolyte Labs., 16
USPQ2d at 1240, and the design element of the mark in the ’980 Registration, which
Applicant calls “two birds siting on a dripping fountain pen,” 16 TTABVUE 5, is not
likely to be verbalized. Because the letters KW in the ’980 Registration can be
verbalized, however, when the mark as a whole is verbalized, it is far more likely that
Serial No. 88204602
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it will be spoken and heard simply as “KW,” which is aurally identical to Applicant’s
mark consisting of “KW” alone. Cf. Textron, 215 USPQ at 163 (“when letter marks
are presented in a highly stylized form, so that they are essentially design marks
incapable of being pronounced or conveying any inherent meaning, then differences
in the lettering style and design may be sufficient to prevent a likelihood of confusion”
because “similarity of appearance is usually controlling and the decision will turn
primarily on the basis of the visual similarity of the marks.”). We find that the marks
are identical in sound when they are verbalized in their most likely manners.
Finally, with respect to meaning, in the context of identical goods, Applicant’s KW
letter mark and the mark in the ’980 Registration both connote cosmetics formulated
by or originating with someone with the initials “KW.” To the extent that consumers
recall the presence of the design elements in the mark in the ’980 Registration when
they separately encounter Applicant’s KW mark, they are likely to believe that
Applicant’s mark is simply a streamlined version of the composite word-and-design
mark in which only the initials KW appear. We find that the marks are similar in
connotation and commercial impression.
The marks are similar in all three means of comparison when considered in their
entireties, particularly taking into account the lesser “degree of similarity necessary
to support a conclusion of likely confusion,” Double Coin Holdings, 2019 USPQ2d
377409 at *6, and the first DuPont factor supports a finding of a likelihood of
confusion.
Serial No. 88204602
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C. Purchasing Conditions and Consumer Sophistication
“We now consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers.” New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d
10596, *15 (TTAB 2020). “A heightened degree of care when making a purchasing
decision may tend to minimize likelihood of confusion. Conversely, impulse purchases
of inexpensive items may tend to have the opposite effect.” Id. (citing Palm Bay Imps.,
73 USPQ2d at 1695). “Board precedent requires [our] decision to be based ‘on the
least sophisticated potential purchasers.’” Stone Lion, 110 USPQ2d at 1163 (quoting
Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011),
judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014)).
Applicant argues that “[t]he manner in which the consumer encounters the goods
and the purchasing decision he or she makes shows that there is no likelihood of
confusion here,” 13 TTABVUE 12, because “both Applicant and Registrant provide
prestige high end luxury cosmetics.” Id. Applicant further argues that
Applicant’s goods are organic, and include recyclable,
compostable, and refillable cosmetic products which cater
to a sophisticated consumer base focused on sustainable
and eco-friendly consumables. These consumers apply
these products directly to their face and body. It is highly
unlikely that a buyer would make an impulse purchase due
to the highly specific market for cosmetics. Consumers in
the instant case would be readily able to distinguish
Applicant’s goods from the goods offered by the Registrant.
Id. at 13.
Serial No. 88204602
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The Examining Attorney responds that for three reasons “[i]t is untenable to
assume that the relevant consumers are sophisticated.” 15 TTABVUE 15. “First,
applicant provides no evidence demonstrating that the relevant consumers are
sophisticated. There is nothing in the record to support this contention.” Id. “Second,
the Board has regularly concluded that broadly identified cosmetics are ‘common
consumer items, and the customers for such goods are ordinary consumers who have
no particular sophistication.’” Id. (quoting In re Sierra Madre Prods., LLC, 2018
TTAB LEXIS 104, *9 (TTAB March 26, 2018); Estee Lauder Cosmetics Ltd. v. Yung
Shin Pharm. Indus. Co., 2012 TTAB LEXIS 123, *18 (TTAB March 12, 2012); In re
Int’l Cosmetics Mfg., Inc., 2000 TTAB LEXIS 685, *5-6 (TTAB Sept. 28, 2000)). “Third,
although applicant argues that its goods are ‘all natural, organic, luxury makeup and
skin-related products,’ its identification of goods contains no limitation to that effect,”
id. at 15, and “registrant’s identifications also do not contain any limitation of trade
channels or class of consumers. Without such a limitation, it is presumed that both
applicant’s and registrant’s goods will be marketed to all classes o f consumers,
including casual purchasers of low-cost cosmetics.” Id. at 15-16 (citations and footnote
omitted). The Examining Attorney concludes that “[g]iven the law and applicant’s
lack of evidence and a limitation statement, the Board should find that the relevant
consumers are casual purchasers who are generally more likely to be confused as to
the source of goods and mistakenly believe that the goods originate from a common
source.” Id. at 16.
Serial No. 88204602
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We agree in substantial part with the Examining Attorney. While we are not
bound by the non-precedential decisions cited by the Examining Attorney, see, e.g.,
Stawski v. Lawson, 129 USPQ2d 1036, 1048 (TTAB 2018), and must determine the
likely degree of purchaser care based on the record before us in this case, we agree
with the Examining Attorney that Applicant “provides no evidence demonstrating
that the relevant consumers are sophisticated.” 15 TTABVUE 15. Ms. Kjaer Weis
does not address the sophistication of the purchasers of Applicant’s goods in her
declaration, and argument of counsel regarding the nature of Applicant’s goods and
the habits of their purchasers is “no substitute for evidence.” In re OEP Enters., Inc.,
2019 USPQ2d 309323, *15 (TTAB 2019) (quoting Cai, 127 USPQ2d at 1799).
We further agree with the Examining Attorney that the goods identified in the
application and in the ’980 Registration contain no limitations regarding their nature,
channels of trade, classes of consumers, or price points, and in the absence of such
limitations, we “must presume that [A]pplicant’s [cosmetics] encompass all goods of
the type identified . . . and that they will be sold in all normal channels of trade and
to all of the usual customers for such goods.” Skincode AG v. Skin Concept AG, 109
USPQ2d 1325, 1328 (TTAB 2013) (finding that goods identified in the involved
application as “cosmetics” encompass “cosmetics . . . adapted for use on the skin and
the scalp.”).19 Although Applicant argues that the involved goods are “prestige high

19 Accordingly, even if Applicant had provided evidence that its mark is used on “high end
luxury cosmetics,” 13 TTABVUE 12, and “recyclable, compostable, and refillable cosmetic
products which cater to a sophisticated consumer base focused on sustainable and eco-
friendly consumables,” id. at 13, we could not limit the goods as identified or their purchasers
by reference to such extrinsic evidence.
Serial No. 88204602
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end luxury cosmetics,” 13 TTABVUE 12, “[n]either identification of goods restricts
the recited cosmetics by price,” FabFitFun, 127 USPQ2d at 1673, and “[i]n the
absence of any limitations suggesting otherwise, we find that the cosmetics at issue
include lower cost make-up items that may be purchased without a high degree of
care.” Id. We find that the least sophisticated potential purchaser of cosmetics is not
likely to exercise more than ordinary care in purchasing the goods, and the fourth
DuPont factor is thus neutral in our analysis of the likelihood of confusion.
D. Absence of Actual Confusion
The eighth DuPont factor considers “the length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.” In
re Guild Mortg. Co., 2020 USPQ2d 10279, *6 (TTAB 2020) (quoting DuPont, 177
USPQ at 567). In Guild Mortg., the Board held that unlike the second, third, and
fourth DuPont factors, the eighth DuPont factor “requires us to look at actual
market conditions, to the extent there is evidence of such conditions of record.” Id.
(emphasis in original).
Applicant argues that the Kjaer Weis Declaration provides such “evidence that,
despite almost 10 years of continuous use of Applicant’s mark on cosmetics
concurrently with registrant’s purported use of its marks with cosmetics, Applicant
is unaware of any instances of actual confusion or any actual trademark conflict or
dispute between Applicant and the owner of the cited registrations.” 13 TTABVUE 7.
Ms. Kjaer Weis testified specifically that “[m]y mark ‘KW’ has been in continuous use
in U.S. commerce on cosmetics since at least as early as September 9, 2010,” Kjaer
Serial No. 88204602
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Weis Decl. ¶ 3,20 and that “[d]espite almost nine years of continuous use of my mark
on cosmetics concurrently with the purported use of the marks of any one of U.S. Reg.
Nos. 2,774,005; 2,873,980; and 2,894,837,” she is “not aware of any actual confusion
between my ‘KW’ mark for cosmetics and the marks of any one of U.S. Reg. Nos.
2,774,005; 2,873,980; and 2,894,837, any actual confusion between the respective
products and businesses,” Kjaer Weis Decl. ¶ 5, or any “actual trademark conflict or
dispute between myself and the owner of those registrations.” Kjaer Weis Decl. ¶ 6.21
Applicant concludes that “[g]iven that the marks have existed without any confusion
for almost ten years, the finding of likelihood of confusion by the Examining Attorney
is untenable and should be reversed.” 13 TTABVUE 8.
The Examining Attorney responds that Ms. Kjaer Weis’s “‘[u]ncorroborated
statements of no known instances of actual confusion . . . are of little evidentiary
value,’ especially in this ex parte examination,” 15 TTABVUE 10 (quoting In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)), and
“are mere speculation.” Id. The Examining Attorney also argues that “the supposed
lack of actual confusion between applicant’s stylized mark in Registration No.
4153624 and registrant’s stylized marks has no bearing on the likelihood of confusion

20 When Ms. Kjaer Weis executed her declaration on August 23, 2019, she was the owner of
the KW mark and the application.
21 Applicant also argues in its appeal brief that “KW® branded cosmetics have been sold
throughout the United States at retailers, over the Internet and via social media,” that “KW®
branded products have received wide media recognition” and have won multiple awards, that
the products are “used by numerous celebrities,” and that Applicant has extensively
promoted the products through social media. 13 TTABVUE 7-8. We disregard these claims
because they are either based on the materials attached to Applicant’s appeal brief, which
we have excluded from the record as untimely, or are unsupported arguments of counsel.
Serial No. 88204602
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between applicant’s standard character mark in the underlying application and
registrant’s stylized marks” because “[i]f applicant were to present its standard
character mark in the exact same manner in which registrant presents its marks,
consumers would find the marks confusingly similar.” Id. (emphasis in original).
The Kjaer Weis Declaration does not support a finding that the absence of
reported instances of actual confusion makes confusion unlikely for two reasons.
First, “in this ex parte context, there has been no opportunity to hear from Registrant
about whether [she] is aware of any reported instances of confusion.” Guild Mortg.,
2020 USPQ2d 10279 at *7 (citing In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB
2001) (“The fact that an applicant in an ex parte case is unaware of any instances of
actual confusion is generally entitled to little probative weight in the likelihood of
confusion analysis” because “the Board in such cases generally has no way to know
whether the registrant likewise is unaware of any instances of actual confusion, nor
is it usually possible to determine that there has been any significant opportunity for
actual confusion to have occurred.”)). “We therefore are getting only half the story,”
id., and Ms. Kjaer Weis’s “self-serving testimony of . . . unawareness of instances of
actual confusion [is] not conclusive that actual confusion did not exist or that there
[is] no likelihood of confusion.” Majestic Distilling, 65 USPQ2d at 1205 (citing In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)).
Second, as Applicant acknowledges, “[f]or the absence of actual confusion to be
probative, there must have been a significant opportunity for confusion to occur.” 13
TTABVUE 7 (citing Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287
Serial No. 88204602
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(TTAB 2007)). The “absence of any reported instances of actual confusion would be
meaningful only if the record indicated appreciable and continuous use by [A]pplicant
of its mark for a significant period of time in the same markets as those served by
[Registrant] under [her] marks.” Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). As noted above, with respect to other DuPont factors “[w]e must
look to the goods as identified in the involved application[ ] and cited registration, not
to any extrinsic evidence of actual use,” In re I-Coat Co., 126 USPQ2d 1730, 1737
(TTAB 2018), but under the eighth factor, we must consider Ms. Kjaer Weis’s
testimony about “actual market conditions.” Guild Mortg., 2020 USPQ2d 10279 at
*6. What she says—and does not say—in her declaration precludes a finding that
there has been “a significant opportunity for confusion to occur.” 13 TTABVUE 7.
“Any lengthy absence of actual confusion during a period of known, rather than
legally presumed, use in the same channels of trade could be telling” under the eighth
DuPont factor, New Era, 2020 USPQ2d 10596 at *17, but Ms. Kjaer Weis testified
that the involved goods “appear to be sold in different product lines and channels of
trade, in a manner that is avoiding any actual confusion.” Kjaer Weis Decl. ¶ 7. It is
self-evident that uses of the marks on goods sold “in different product lines and
channels of trade,” particularly “in a manner that is avoiding any actual confusion,”
are not likely to yield instances of actual confusion, and their absence is meaningless
under the circumstances. As noted above, “[u]se in the same channels of trade could
be telling,” New Era, 2020 USPQ2d 10596 at *17, but the record is devoid of evidence
of such use.
Serial No. 88204602
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Ms. Kjaer Weis’s declaration is also silent about the extent of Applicant’s sales
and advertising under its mark, or whether the involved goods have been sold in the
same geographic markets. As a result, “there simply is no evidence that the [involved]
goods have been sold together in the same locality for a significant period of time so
that, if confusion were likely to occur, circumstances have been such that it could be
expected to have happened.” Gillette Can., 23 USPQ2d at 1774. Cf. Guild Mortg., 2020
USPQ2d 10279 at *6-8 (finding declaration testimony regarding scope of applicant’s
use of its mark over a 40-year period without reported instances of actual confusion
insufficient to show that confusion was unlikely); In re Gen. Motors Corp., 23 USPQ2d
1465, 1471 (TTAB 1992) (evidence on eighth DuPont factor found to be persuasive
that confusion was unlikely where “during a nearly thirty-year interval of sustained
success in the marketing of what, for the average consumer, is typically a major and
expensive purchase,” the applicant “experienced no reported instances of actual
confusion between its use of ‘GRAND PRIX’ in connection with almost 2.7 million
automobiles and registrant’s use of its ‘GRAND PRIX’ marks for related automotive
replacement parts.”).
On this record, we cannot find that there has been “appreciable and continuous
use by [A]pplicant of its mark for a significant period of time in the same markets as
those served by [Registrant] under [her] marks.” Gillette Can., 23 USPQ2d at 1774.
The eighth DuPont factor is thus neutral in our analysis of the likelihood of confusion.
Serial No. 88204602
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E. Applicant’s Prior Registration No. 4153624
“The thirteenth and final du Pont factor pertains to ‘any other established fact
probative of the effect of use.’” Country Oven, 2019 USPQ2d 443903 at *15 (quoting
DuPont, 177 USPQ at 567). Rarely invoked, and not expressly invoked by Applicant
here, “this factor ‘accommodates the need for flexibility in assessing each unique set
of facts . . . .” Id. (quoting In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB
2012)). “This includes a variety of circumstances, such as the coexistence of an
applicant’s prior-registered mark with the cited registration. Where an applicant
owns a prior registration and the mark is ‘substantially the same’ as in the applied-
for application, this can weigh against finding that there is a likelihood of confusion.”
Id. (citing Inn at St. John’s, 126 USPQ2d at 1748).
Applicant argues that it “owns incontestable United States Trademark
Registration No. 4,153,624, issued June 5, 2012 for the stylized mark for
cosmetics in International Class 03.” 13 TTABVUE 3. As noted above, the Examining
Attorney made this registration of record during prosecution,22 and both Applicant
and the Examining Attorney addressed the mark in this registration under the first
and eighth DuPont factors, so we will consider whether the registration has any
bearing on the likelihood of confusion under the thirteenth DuPont factor.
In Strategic Partners, the Board reversed a refusal to register the mark shown
below for footwear

22 March 23, 2020 Denial of Request for Reconsideration at TSDR 134-35.
Serial No. 88204602
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over a registration of the mark shown below for various clothing items

The applicant owned an incontestable registration of the standard character mark
ANYWEARS for various footwear and argued, under the thirteenth DuPont factor,
that “the coexistence of its existing registration with the cited registration is a
significant fact to consider in the likelihood of confusion analysis .” Strategic Partners,
102 USPQ2d at 1398.
The Board responded that it “would conclude, under usual circumstances, that
confusion is likely to occur among consumers in the marketplace,” id. at 1399, but
found that it had to “balance the similarities between the marks and goods against
the facts that applicant already owns a registration for a substantially similar mark
for the identical goods, and that applicant ’s registration and the cited registration
have coexisted for over five years.” Id. The Board held that the applicant’s prior
standard character registration of ANYWEARS entitled the applicant to display that
mark “in the identical font style and size in which applicant ’s applied-for mark is
shown (or, for that matter, in the identical manner in which the ANYWEAR portion
Serial No. 88204602
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of registrant’s mark is depicted),” which meant that there was “no meaningful
difference between the standard character and stylized versions of applicant ’s
marks.” Id.
The Board found that the applicant’s registered standard character mark, “a mark
that is substantially similar to the applied-for mark, both covering ‘footwear,’ has
coexisted with the cited mark for over five years,” and “thus is not subject to attack
by the owner of the cited registration on a claim of priority and likelihood of
confusion.” Id. (citation omitted). The Board concluded “that these facts tip the scale
in favor of applicant and a finding of no likelihood of confusion.” Id.
The facts here are essentially the obverse of those in Strategic Partners.
Applicant’s prior registration covers a highly-stylized version of the letters KW, and
unlike in Strategic Partners, this registration does not entitle Applicant to display
the mark “in the identical manner in which the [KW] portion of [R]egistrant’s mark
is depicted.” Id. The standard character registration that Applicant seeks in the
involved application would expand Applicant’s rights beyond those that it enjoys
under its prior registration because a standard character registration would entitle
Applicant “to depict the mark regardless of font style, size or color,” id., including not
only in the highly stylized manner in which the letters appear in Applicant’s prior
registration, but also in multiple other manners, including that in which the letters
KW appear in the mark in the ’980 Registration. There is thus a “meaningful
difference between the standard and stylized versions of [A]pplicant’s marks.” Id.
Serial No. 88204602
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“[T]here is no rule that a prior registration entitles a party to another
registration,” and the thirteenth DuPont factor “is highly fact specific and it is under
very specific circumstances that this factor may matter.” Country Oven, 2019
USPQ2d 443903 at *18. Given that Applicant seeks expanded rights in its current
application beyond those that it enjoys under Registration No. 4153624, we find that
“those circumstances do not exist here,” id., and the thirteenth DuPont factor is
neutral in our analysis of the likelihood of confusion.
F. Summary and Balancing of the DuPont Factors
The first, second, and third DuPont factors together strongly support a finding of
a likelihood of confusion. Applicant’s standard character KW mark and the mark in
the ’980 Registration are sufficiently similar in appearance, sound, and connotation
and commercial impression when considered in their entireties to make confusion
likely when the marks are used on identical goods sold in identical channels of trade
to identical consumers, who are unlikely to exercise more than ordinary care in
purchasing. The absence of evidence of actual confusion during the period of apparent
simultaneous use of the marks, and Applicant’s ownership of an incontestable
registration of KW in stylized form that co-exists with the ’980 Registration, are
insufficient to negate the conclusion that consumers who are familiar with the mark
in the ’980 Registration for cosmetics who encounter Applicant’s KW mark for
cosmetics are likely to believe mistakenly that Applicant’s goods originate with, or
are authorized or sponsored by, the owner of the ’980 Registration.
Decision: The refusal to register is affirmed.