La Femme Cosmetics, Inc.

Trademark Trial and Appeal Board

Apr 5, 2001

No. 75656218 (T.T.A.B. Apr. 5, 2001)

04/05/01 Paper No. 9
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re La Femme Cosmetics, Inc.
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Serial No. 75/656,218
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Michael A. Painter for La Femme Cosmetics, Inc.
William P. Jacobi, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney)
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Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
La Femme Cosmetics, Inc. (applicant) seeks to register
in typed drawing form LA FEMME for the following goods:
cosmetics, namely, skin cleansing lotion, concealer, cuticle
remover preparation, eye shadow, eye liner, eyebrow pencil,
facial scrub, false eyelashes and adhesive therefor, hand
and body lotion, lipstick, lip gloss, lip liner, liquid and
cream foundation, loose and pressed powder,
facial masques, skin moisturizing lotion, nail
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/656,218
decals, nail polish, nail polish remover, replenishing
cream, rouge and toner. The application was filed on March
8, 1999 with a claimed first use date of August 1957. At
page 2 of a paper dated December 29, 1999 applicant stated
that “the English translation of the words LA FEMME is ‘the
woman’ or ‘the wife.’”
The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the basis
that applicant’s mark LA FEMME, as applied to applicant’s
goods, is likely to cause confusion with the mark FEMME,
previously registered in typed drawing form for “cosmetic
and toilet preparations; namely, perfume and cologne.”
Registration No. 1,825,704. This registration contains a
statement that two of the English translations of the word
FEMME are woman and wife.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
examining attorney filed briefs. Applicant did not request
a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
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Ser. No. 75/656,218
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, we find that applicant’s
mark LA FEMME is almost identical to the cited mark FEMME in
terms of visual appearance, pronunciation and meaning. The
similarities in visual appearance and pronunciation are
obvious. In addition, we find that there is no meaningful
distinction in meaning between “the woman” and “woman” or
between “the wife” and “wife.”
Moreover, it must be remembered that applicant seeks
to register LA FEMME in typed drawing form. Thus, in our
likelihood of confusion analysis, we must consider all
reasonable manners in which applicant could depict its mark.
Phillips Petroleum v. C. J. Webb, 442 F.2d 1376, 170 USPQ
35, 36 (CCPA 1971). One reasonable manner of depiction
would be to place the LA portion of applicant’s mark on one
line and the FEMME portion of applicant’s mark on a second
line, and further to place the LA portion of applicant’s
mark in slightly smaller lettering than that used for the
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Ser. No. 75/656,218
FEMME portion of applicant’s mark. When so depicted,
applicant’s mark would be virtually identical to the
registered mark FEMME. Thus, the first Dupont “factor
weighs heavily against the applicant” because the two word
marks are virtually identical. In re Martin’s
Famous Pastry Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984).
Turning to a consideration of applicant’s goods and
registrant’s goods, we note that because the marks are
virtually identical, their contemporaneous use can lead to
the assumption that there is a common source “even when
[the] goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
However, in this case we find that applicant’s goods
and registrant’s goods are very closely related. Even if we
accept for the sake of argument applicant’s contention that
technically perfume and cologne (registrant’s goods) are not
cosmetics, nevertheless, perfume and cologne are very
closely related to many if not most of the goods for which
applicant seeks to register LA FEMME. As applicant itself
acknowledges at pages 4 and 5 of its brief, goods can be
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Ser. No. 75/656,218
related if “they are capable of conjoint use” or if “they
can be purchased and used by the same end users.” Clearly,
perfume and cologne could be used in conjunction with many
of applicant’s goods including, simply by way of example,
lipstick, eye shadow, rouge and skin cleansing lotion.
Moreover, it is quite obvious that the same consumers who
purchase perfume and cologne would purchase many if not all
of the goods for which applicant seeks to register LA FEMME.
In this regard, we note that the predecessor to our primary
reviewing Court held that cologne and shampoo are related
goods in that both are “toilet articles purchased by members
of the same general class.” Daggett & Ramsdell, Inc. v.
Proctor & Gamble Co., 275 F.2d 955, 125 USPQ 236, 238 (CCPA
1960). If cologne and shampoo are related goods, then
clearly cologne and skin cleansing lotion (one of
applicant’s goods) are related. Shampoo serves to cleanse
the hair and the scalp, the latter being part of the skin.
Skin cleansing lotion also serves to cleanse the skin.
Given the fact that applicant’s mark and registrant’s
mark are virtually identical and the fact that the marks are
used on clearly related goods, we find that there exists a
likelihood of confusion.
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Ser. No. 75/656,218
Decision: The refusal to register is affirmed.
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