Lancome Parfums et Beaute & Cie

Trademark Trial and Appeal Board

Sep 8, 2000

No. 75348649 (T.T.A.B. Sep. 8, 2000)

Hearing: Paper No. 18
March 22, 2000 ejs
9/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lancome Parfums et Beaute & Cie
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Serial No. 75/348,649
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Russell H. Falconer and Cecil Kay of Baker & Botts, L.L.P.
for Lancome Parfums et Beaute & Cie
Jennifer M.B. Krisp, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney)
_______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Lancome Parfums et Beaute & Cie has appealed from the
refusal of the Trademark Examining Attorney to register
VITABOLIC as a trademark for “cosmetics, namely creams,
milks, lotions, gels and powders for the face.”1 A final

1 Application Serial No. 75/348,649, filed August 28, 1997,
claiming a right of priority pursuant to Section 44(d) based on a
French registration for which application was made on March 5,
1997. The application is based both on a bona fide intention to
use the mark in commerce (Section 1(b) of the Act), and on the
foreign registration (Section 44(e)).
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
Ser. No. 75/348,649
2
refusal of registration issued pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the basis that
applicant’s mark so resembles the marks VITABOLIC AM (AM
disclaimed) and VITABOLIC PM (PM disclaimed), both
registered by the same entity for “vitamin and mineral
supplements” that, if used on applicant’s goods, it is
likely to cause confusion or mistake or to deceive.
The appeal has been fully briefed, and applicant and
the Examining Attorney appeared at an oral hearing before
the Board.
We affirm the refusal of registration with respect to
both of the cited registrations.
Our determination 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). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the marks. It is
well established that 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
Ser. No. 75/348,649
3
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this case,
VITABOLIC is clearly the dominant portion of the cited
marks. Although the latter marks include the disclaimed
elements AM and PM, those elements merely describe the time
of day during which the registrant’s goods may be taken.
Consumers would regard AM and PM as merely informational
elements, and would view VITABOLIC as the source-
identifying part of the marks. Therefore, the absence of a
time-indicating element in applicant’s mark, or the
presence of these elements in the cited marks, is
insufficient to distinguish applicant’s mark from the
registrant’s.
The term VITABOLIC is obviously identical in
appearance and pronunciation in both applicant’s and the
registrant’s marks. Applicant argues, however, that the
marks have different connotations due to their use on
different goods. Specifically, applicant asserts that,
with respect to the registrant’s vitamin and mineral
supplements, consumers would regard the VITA portion of the
marks as referring to “vitamins” and the BOLIC portion of
the marks as referring to “metabolic functioning.” On the
other hand, applicant argues that, when its mark is applied
Ser. No. 75/348,649
4
to creams, milks, lotions, gels and powders for the face,
VITA would be viewed as a “pseudonym” for “vital,”
“vitality,” “vitalize” or “revitalize” and that BOLIC is
merely a catchy suffix which is used in other adjectives
such as “anabolic,” “carbolic,” “catabolic,” “diabolic,”
etc. From this, applicant argues that consumers would
understand applicant’s mark as “symbolic of vitality.”
When the Examining Attorney, in her brief, pointed out that
“anabolic” and “catabolic" are connected with metabolic
functions, applicant engaged in a somewhat tortured
semantic argument, breaking down the syllables to show that
“bolic” is simply the adjective form of the word.
We think it unnecessary to engage in convoluted
guesses as to how consumers might analyze the term
VITABOLIC. It is not a real word, with recognized
meanings, such that we could say that one meaning is more
likely to be understood with respect to a particular
product than is another meaning. Cf. In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). We do not think
consumers for these goods are likely to jump through the
semantic hoops raised by applicant to arrive at the
different meanings for VITABOLIC that applicant suggests.
Certainly the VITA prefix can have the same meaning with
respect to both applicant’s and registrant’s goods, i.e.,
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the “vitality” meaning asserted by applicant is applicable
to the registrant’s products since vitamin and mineral
supplements can provide “vitality,” or the “vitamin”
meaning can apply to applicant’s products since, as
applicant has acknowledged in both its reply brief and at
the oral hearing, skin care cosmetics can contain vitamins
(specifically, vitamins C and E).
As for the AM and PM elements in the cited marks, as
noted before, the fact that they suggest that the products
may be taken at particular times of day, does not change
the connotation of the parties’ marks as a whole.
Thus, when the marks are considered in their
entireties, they are virtually identical in appearance and
pronunciation and, insofar as the invented term VITABOLIC
can be said to have a connotation, the suggestive meaning
of both marks would be similar or the same.
This brings us to a consideration of the goods.
Applicant points out at some length that its products are
not competitive with and cannot be substituted for the
registrant’s identified goods. However, it is not
necessary that the goods of the parties be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods of the parties are
Ser. No. 75/348,649
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related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The Examining Attorney has made of record third-party
registrations showing that eleven companies have registered
their marks both for goods of the type listed in
applicant’s application and for goods of the type recited
in registrant’s registrations. For example, NEXTAR BERRY
is registered for, inter alia, skin creams and lotions and
for dietary supplements containing vitamins and minerals
(Registration No. 2,135,249); NUWAY and design is
registered for, inter alia, skin care lotions, gels, talcum
powder and creams, and for nutritional supplements, namely
vitamin, mineral and herbal supplements (Registration No.
2,135,241); and VITA-VISTA is registered for, inter alia,
cosmetics, namely moisturizers and emollients, and for
vitamins, minerals and dietary food supplements.
(Registration No. 1,200,799). Third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
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the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant argues that these eleven registrations are
such a small number compared to the thousands of
registrations in Class 3 that they do not establish that
there is any real overlap between the cosmetics and
nutritional supplement industries.
We do not find this argument to be persuasive. First,
the Examining Attorney stated, when she made the
registrations of record, that they were a representative
sample, selected for the purpose of brevity, and that many
more such registrations exist on the Register. This is not
a situation in which the Examining Attorney has made only
two or three third-party registrations of record, and we
have had to presume that these were the only registrations
he or she was able to find. Cf. In re Federated Department
Stores Inc., 3 USPQ2d 1541, 1542, ftnt. 2 (TTAB 1987). The
Board has said on a number of occasions that it does not
wish to have the application file burdened with every
third-party registration, or every newspaper article, that
the Examining Attorney can find in support of his or her
position, and that it is not only appropriate, but
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preferred, that the Examining Attorney make of record only
a representative sample.
The second problem with applicant’s argument is that
it uses statistics in a way that is meaningless. Aside
from the fact that the raw numbers of how many
registrations which have issued in Class 3 do not reflect
how many have issued to the same registrant, nor do they
reflect whether a registrant may have obtained a separate
registration for the same mark in Class 5, rather than
multi-class registration covering both Classes 3 and 5, the
question is not whether the majority of cosmetics
manufacturers also sell vitamin and mineral supplements.
It is only whether these are the kind of products that may
be sold by the same manufacturer under the same mark, and
eleven representative third-party registrations are
sufficient to demonstrate that.
The goods may also be sold in the same channels of
trade. Applicant and the Examining Attorney have both
directed their arguments to the channels of trade in which
applicant’s goods are actually sold or intended to be sold,
and the channels in which applicant asserts the
registrant’s goods are actually sold. However, the
question of likelihood of confusion must be determined on
the basis of the identification of goods set forth in the
Ser. No. 75/348,649
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subject application and cited registrations. In re William
Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976). See also,
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus,
we must deem the goods to be sold in all channels of trade
which are appropriate for goods of the type identified.
Moreover, applicant has acknowledged that its goods are
sold, inter alia, in pharmacies (affidavit of Jose
Monteiro), and has also acknowledged that vitamins and
minerals are usually sold, inter alia, in drugstores
(response filed July 23, 1998). Thus, at least one of the
channels of trade for the goods identified in applicant’s
application and the registrant’s registrations is the same.
The purchasers for both types of products are the
general public. Applicant points out that its products are
sold to women, while the registrant’s products are gender
neutral. Even if that is the case, this still means that
both parties’ products would be purchased by women, a large
portion of the population. Applicant argues that the
products would not be purchased on impulse, basing this
argument, in part, on the fact that its products are sold
in high end retail outlets at relatively higher price
points compared to other cosmetic products. However, as
noted above, we must determine the question of likelihood
Ser. No. 75/348,649
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of confusion on the basis of the goods as they are
identified in the application. As identified, applicant's
goods are not restricted to expensive or high-end cosmetic
products. Further, even if we accept applicant's argument
that consumers would make careful buying decisions because
they need to evaluate whether the cosmetic and vitamin
products meet their requirements, the fact remains that the
source-identifying feature of the marks, the term
VITABOLIC, is identical in both marks, and the marks in
their entireties are extremely similar. In view thereof,
even careful purchasers are likely to be confused into
believing that the VITABOLIC cosmetics and the VITABOLIC AM
and VITABOLIC PM vitamin and mineral supplements emanate
from the same source.
Applicant also argues that the registrant's mark is
weak because there are numerous third-party registrations
for both vitamins and cosmetic products which contain the
element VITA. Preliminarily, we note that applicant
submitted copies of these third-party registrations with
its brief, and that these submissions would normally be
considered untimely. See Trademark Rule 2.142(d).
However, because the Examining Attorney has discussed the
registrations in her brief, we will deem them as having
been stipulated into the record. The third-party
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registrations do show that VITA has a significance for
vitamin and cosmetic products, and we can agree with
applicant that consumers will not associate all marks
beginning with VITA with a single source. However,
applicant's arguments ignore the fact that its mark and the
cited marks are similar not only because they have the
common element VITA, but also have the identical coined
term VITABOLIC. It is because of this term in both
applicant's and the cited marks, and not merely on the
presence of the prefix VITA, that we have based our finding
of likelihood of confusion.
Applicant has discussed certain other duPont factors
which in general are more appropriate to consideration in
inter partes cases. For example, applicant has stated that
the cited marks are not famous. Obviously, Examining
Attorneys are not in a position to provide evidence
regarding the fame of a registrant's mark. We cannot
conclude, on the basis of this record, that the cited marks
are famous, and therefore this factor has not been
considered in rendering our decision. Similarly, because
we have not heard from the registrant in connection with
this appeal, we cannot accept applicant's assertion that
the registrant will not expand into the cosmetics field.
Although we treat this factor as neutral in terms of making
Ser. No. 75/348,649
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our decision on likelihood of confusion, the third-party
registrations are evidence that companies which sell
vitamin and mineral supplements also sell cosmetic
products.
Applicant also asserts that there has been no apparent
confusion. In its brief applicant's attorney states that
applicant commenced "widespread use" of its mark in the
fall of 1998, although, interestingly, the affidavit of Mr.
Monteiro, which was signed on February 4, 1999, makes no
mention of any sales. In any event, we cannot conclude
from applicant's attorney's advising the Board "informally
that no instances of apparent confusion with the cited
marks have been brought to Lancome's attention", brief,
p. 19, that confusion is not likely. There has been a very
limited period during which applicant has used its mark
(the brief asserting no actual confusion was filed on
June 30, 1999) and applicant has not provided any details
of its sales or advertising. Nor do we know what the
registrant's experience has been. Moreover, even if there
have been no instances of confusion, that may be due to the
specific manner in which applicant currently sells its
goods, such as in high-end stores at "readily identifiable
Lancome booths or counters." Brief, p. 18. However, as
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noted previously, applicant's identification is not
restricted to selling the goods in such a manner.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board