Laboratoire Rene Guinot

Trademark Trial and Appeal Board

Nov 16, 1998

No. 75029201 (T.T.A.B. Nov. 16, 1998)

Paper No. 12
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 16, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Laboratoire Rene Guinot
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Serial No. 75/029,201
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Jay Geller of Law Offices of Jay Geller for Laboratoire
Rene Guinot
Jodi Lauterbach, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
_______
Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Laboratoire Rene
Guinot to register the mark FRAICHEUR DE PEAU for “skin
moisturizing, exfoliating, oil control, softening,
smoothing, conditioning, toning, firming, tightening, and
Ser. No. 75/029201
2
lifting preparations, and preparations to minimize the
appearance of wrinkles.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark FRAICHEUR for “perfumes, eau
de toilette, cologne, after shave cream, after shave
lotion, after shave gel, face and body soap, shaving foam,
shaving cream, anti-perspirant, deodorant.”2
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm.
It is the Examining Attorney’s position that both
parties’ goods are “skin care preparations”; that the goods
are “highly related skin care products which are presumed
to travel in the same or similar channels of trade”; and
that the dominant feature of both marks is the word
FRAICHEUR, to which applicant merely added the descriptive
words DE PEAU.
Applicant’s position is essentially that the goods are
not identical because applicant’s goods are “general skin
care preparations,” while the goods covered in the cited

1 Ser. No. 75/029,201, filed December 7, 1995. The application
is based on a bona fide intent to use the mark in commerce. The
application includes a statement that “The mark ‘FRAICHEUR DE
PEAU’ translates from the French language as ‘SKIN FRESHNESS.’”
Applicant disclaimed the term “peau.”
2 Reg. No. 1,949,308, issued January 16, 1996. The claimed dates
of first use and first use in commerce are April 1, 1993.
Ser. No. 75/029201
3
registration are “fragrances, after shave, soap,
antiperspirant and deodorant,” and “none of applicant’s
products is for fragrance, shaving care, cleansing or
preventing odor” (Applicant’s brief, p. 6); and that the
marks “‘freshness’ and ‘skin freshness’3 create different
commercial impressions” (Applicant’s brief, p. 7); and that
the word “freshness” is a common, everyday word which is
used to describe the qualities and features of numerous
consumer products. Applicant also contends that under the
doctrine of foreign equivalents, dilution of the mark is
established due to the existence on the register of “14
registered marks for skin care products with the word
‘fresh’” (Applicant’s request for reconsideration, p. 5),
and applicant particularly argues two additional
registrations which also include the word FRESHNESS in the
mark, specifically, HIDDEN FRESHNESS4 and FRESHNESS YOU CAN
FEEL5.
Applicant did not submit copies of any third-party
registrations, but rather, applicant listed them in its

3 Applicant’s mark is FRAICHEUR DE PEAU, and the cited registered
mark is FRAICHEUR.
4 Reg. No. 1,751,760, issued February 9, 1993 to William P. Orien
for “skin products, namely, antiperspirant, moisturizers,
conditioners, lubricants, powders, vitamin enriched creams and
lotions.”
5 Reg. No. 1,801,803, issued November 2, 1993 to Henkel
Kommanditgesellschaft Auf Aktien for “toilet soaps, foam baths,
shower gels, deodorants for personal use.”
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4
request for reconsideration and appeal brief, and requested
that the Board take judicial notice of the third-party
registrations argued by applicant. Applicant’s request is
denied because the Board does not take judicial notice of
registrations at the Patent and Trademark Office. See In
re Duofold, Inc., 184 USPQ 638 (TTAB 1974), and Cities
Service Company v. WMF of America, Inc., 199 USPQ 493 (TTAB
1978). See also, TBMP §712.01.
Turning to the involved marks, applicant’s mark
FRAICHEUR DE PEAU and the registered mark FRAICHEUR are
similar in pronunciation and appearance. Specifically,
both marks consist of the French word FRAICHEUR, to which
applicant has merely added the French words DE PEAU, which
translate to “skin” according to applicant, and applicant
has disclaimed the word “PEAU.” The marks look essentially
the same, and for those purchasers familiar with French,
the connotation is essentially identical, clearly relating
to “freshness.”
Applicant’s argument that the registered mark
FRAICHEUR is a weak mark due to the registration of two
particular valid and subsisting marks on the register in
the same class which include the English equivalent term
Ser. No. 75/029201
5
FRESHNESS6 is not persuasive. First, as explained earlier,
applicant did not properly make any third-party
registrations of record in this case. Second, even if
applicant had properly made these registrations of record,
third-party registrations are generally used to show common
or suggestive meanings of terms, but in this case the
meaning of the term FRAICHEUR is not in issue. In any
event, the meaning of the term in both applicant’s mark and
the cited registrant’s mark is the same, specifically,
“freshness,” which is a suggestive term as applied to
various cosmetic products.7
Turning next to the goods, it is well settled that
goods need not be identical or even competitive to support
a finding of likelihood of confusion, it being sufficient

6 Applicant also noted two other registrations in the cosmetic
class--Reg. No. 1,013,338, issued June 17, 1975, for FRESHNESS
FIRST; and Reg. No., 1,521,444, issued January 24, 1989, for HIT
FRAICHEUR. (These registrations are expired and cancelled under
Section 8, respectively.) Applicant did not submit copies of
these registrations.
7 Applicant’s argument relating to the doctrine of foreign
equivalents is misplaced. Under this doctrine, a foreign word
(from a language familiar to an appreciable segment of the United
States population) and the English equivalent may be found to be
confusingly similar. However, the doctrine of foreign
equivalents is not generally invoked if the marks involved are
both foreign words, as is the case now before the Board. See
TMEP §1207.01(b)(1). Further, it is not proper to take the
foreign words in both parties’ marks, convert the words into
English, and compare the English translations to determine
similarity. See Safeway Stores Inc. v. Bel Canto Fancy Foods
Ltd., 5 USPQ2d 1980 (TTAB 1987).
Ser. No. 75/029201
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that the goods are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
1992). While applicant’s various skin preparations vis-a-
vis the cited registrant’s perfumes, after shave products,
soap and deodorants are obviously specifically different
products, it is clear that they are related personal
grooming products sold through the same channels of trade
and purchased by the same purchasers in the same retail
outlets.
Also, the Examining Attorney has introduced evidence
in the form of a number of third-party registrations which
show that several companies have registered their marks for
skin preparations such as moisturizers on the one hand, and
soaps, colognes, and/or after shave products, on the other
hand. See In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988). Purchasers, familiar with
registrant’s toiletries sold under the mark FRAICHEUR, upon
seeing applicant’s skin preparations such as moisturizers
sold under the mark FRAICHEUR DE PEAU, would be likely to
Ser. No. 75/029201
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believe that the products emanated from a single entity or
were associated with the same source.
Decision: The refusal under Section 2(d) is affirmed.
R. F. Cissel
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board