Kose Corporation

Trademark Trial and Appeal Board

Apr 26, 2010

No. 77519214 (T.T.A.B. Apr. 26, 2010)

Mailed: April 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kose Corporation
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Serial No. 77519214
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Daniel J. Russell and Eric S. Hyman of Blakely Sokoloff
Taylor & Zafman for Kose Corporation.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
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Before Seeherman, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Kose Corporation seeks registration on the Principal
Register of the standard character mark AQ for goods
identified as “cosmetics, perfumes, cosmetic soaps, cotton
for cosmetic use and hair care preparations” in
International Class 3 and “eyebrow brushes, cheek brushes,
eye shadow brushes, mascara combs, compacts sold empty, lip
brushes, powder puffs and foundation sponges for applying
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77519214

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make-up” in International Class 21.1 Registration has been
refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used on
its identified goods, so resembles the registered standard
character mark PARADISE MAKEUP AQ for “makeup,” in
International Class 3 (Reg. No. 3236733), as to be likely
to cause confusion, mistake or deception.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
“Makeup” is defined as “cosmetics: cosmetic products,
specifically for the face, e.g., lipstick and mascara.”
Encarta World English Dictionary (North American Edition

1 Application Serial No. 77519214, filed July 10, 2008, alleging
a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1052(b).

Serial No. 77519214

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2007) attached to September 12, 2008 Office Action. Thus,
applicant’s “cosmetics” in International Class 3 encompass
and are legally identical to registrant’s “makeup.”
Applicant’s various items in International Class 21
(“eyebrow brushes” etc.) are closely related to
registrant’s makeup. The goods need not be identical or
directly competitive in order for there to be a likelihood
of confusion. Rather, the respective goods need only be
related in some manner or the conditions surrounding their
marketing be such that they could be encountered by the
same purchasers under circumstances that could give rise to
the mistaken belief that the goods come from a common
source. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Registrant’s
make-up and applicant’s make-up applicators would be used
together and, as such, are complementary. Id. The use-
based third-party registrations submitted by the examining
attorney support this finding. In re Albert Trostel & Sons
CO., 29 USPQ2d 1783 (1993) (third-party registrations may
serve to suggest that such goods emanate from the same
source.) See, e.g., Reg. No. 3328757 for the mark LARENIM
for, inter alia, cosmetics, namely make-up for the eyes,
face and body, and make-up brushes and facial sponges for
applying make-up.
Serial No. 77519214

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Further, because the application and cited
registration do not contain limitations and the goods are
legally identical and otherwise closely related, we must
presume that they travel in the same channels of trade and
are available to the same classes of customers. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987).
We turn then to an analysis of the similarity or
dissimilarity of the marks when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression.
The examining attorney argues that the marks are
similar because the marks “contain the same wording” AQ
which comprises the entirety of applicant’s mark. Br. p.
4. In addition, the examining attorney argues that the
“letters ‘AQ’ have been given greater weight in the
likelihood of confusion analysis because it is the common
wording that both marks share [and t]he arbitrary letters
‘AQ’ are not descriptive or even suggestive of either the
applicant’s or the registrant’s goods [and] there is no
evidence that the letter combination ‘AQ’ is weak or
diluted when used in conjunction with the applicant’s or
Serial No. 77519214

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the registrant’s products.” Br. pp. 5-6. Finally, she
argues that the “common lettering ‘AQ’ creates a similar
overall commercial impression because consumers are likely
to view ‘AQ’ as a house mark for cosmetics, makeup, and
other personal care and beauty products [and] seeing the
registrant’s ‘PARADISE MAKEUP AQ’ products, consumers are
likely to believe that the goods are a specific product
line within the applicant’s ‘AQ’ general line of
cosmetics.” Br. p. 7.
In response, applicant argues that the word PARADISE
is the dominant word in registrant’s mark inasmuch as it is
arbitrary and is the first term in the mark. In addition,
applicant argues that the letters AQ have a different
connotation in registrant’s mark. Applicant bases this
assertion on a response the registrant made to the Office
during prosecution of the application which matured into
the cited registration wherein the registrant stated that
“AQ in PARADISE MAKEUP AQ is short for aqueous.” Request
for Reconsideration (June 26, 2009). Finally applicant
argues that:
Applicant’s prior application to register the
mark AQ COSME DECORTE ABSOLUTE QUALITY ... for
similar goods in International Classes 3 and 21,
and which prominently bears the term AQ, has been
allowed to register over the cited mark PARADISE
MAKEUP AQ. Similarly, the cited mark was allowed
to register over Applicant’s previously approved
Serial No. 77519214

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application for the mark ΛQ for similar goods in
International Classes 3 and 21.... Moreover, the
cited mark PARADISE MAKEUP AQ was allowed to
register over a registration for the mark AQ DAY
for facial cream. Although the AQ DAY mark has
since cancelled, it is notable that the owner of
the cited mark, in traversing a refusal based on
the AQ DAY mark, submitted arguments that even
though both of the marks contain the term AQ,
they are different in sound, appearance, meaning
or connotation, and stated that the dominant term
in its mark was PARADISE, not AQ. Given the
owner of the cited mark’s own arguments and
statements, the mark PARADISE MAKEUP AQ should
not be afforded a wide ambit of protection.

Br. p. 12.

We find that PARADISE is the dominant element in
registrant’s mark. It is an arbitrary term, and appears at
the beginning of the mark. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, (Fed. Cir. 2005); Presto Prods. Inc. v. Nice-
Pak Prods. Inc., 9 USPQ2d 1895 (TTAB 1988). Moreover,
PARADISE is followed by the word MAKEUP, a generic term,
that has the effect of further emphasizing the first word.
The lettering AQ comes at the end after the generic term
and appears almost as an afterthought. Thus, the word
PARADISE is the element with the strongest source-
identifying capability in registrant’s mark.2 In re

2 In this regard, we do not agree with the examining attorney’s
analysis giving greater weight to the term AQ in registrant’s
mark because it is the common term and is not descriptive. It
must first be determined what, if anything, is the dominant
element in a mark, regardless if it is the common element.
Serial No. 77519214

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National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). We further note that the registrant itself
characterized PARADISE as the dominant element of its mark
when prosecuting the application that resulted in the
registration. Cf. Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA
1978) (although not determinative, prior statements in a
similar proceeding may be “illuminative of shade and tone
in the total picture confronting the decision maker”). In
view thereof, considering the marks in their entireties,
despite the common lettering AQ, we find that they are
dissimilar in appearance, sound, connotation and commercial
impression.
In making this finding, we do not give any credence to
applicant’s argument regarding the connotation of the
element AQ in the respective marks. The record here does
not support applicant’s argument that AQ would have a
different connotation in registrant’s mark. While the
registrant noted the meaning “aqueous” for AQ during the
prosecution of its underlying application, there is nothing
in the record to indicate that consumers would associate
the meaning “aqueous” in connection with registrant’s types
of goods or if consumers did associate the meaning
“aqueous” with the letters AQ when used in connection with
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makeup or cosmetics, that they would not make that same
association when used in applicant’s mark. In addition,
there is nothing about the words PARADISE or MAKEUP that
give the letters AQ a specific or different meaning from
the letters used alone, as in applicant’s mark.
In conclusion, in this case the dissimilarity of the
marks is dispositive. See Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular
case, a single duPont factor may not be dispositive”).
Applicant’s mark used on its identified goods is not likely
to cause confusion with the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is reversed.