Lancome Parfums et Beaute & Cie

Trademark Trial and Appeal Board

Feb 12, 2014

No. 85081226 (T.T.A.B. Feb. 12, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
January 16, 2014 February 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Lancôme Parfums et Beaute & Cie
_____

Serial No. 85081226
_____

Robert L. Sherman of Paul Hastings LLP for Lancôme Parfums et Beaute & Cie.

Florentina Blandu, Trademark Examining Attorney, Law Office 117 (J. Brett
Golden, Managing Attorney).
_____

Before Seeherman, Shaw and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Lancôme Parfums et Beaute & Cie (applicant) seeks registration on the
Principal Register of the following mark in stylized form

for goods ultimately identified as “Perfume, eau de toilette; gels, salts for the bath
and the shower not for medical purpose; toilet soaps, body deodorants; cosmetics,
namely, creams, milks, lotions, gels and powders for the face, the body and the
hands; makeup preparations; shampoos; gels, sprays, mousses and balms for hair
Serial No. 85081226
2

styling and hair care; hair lacquers; hair coloring and hair decolorant preparations;
permanent waving and curling preparations; essential oils for personal use” in
International Class 3.1
The examining attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so
resembles the previously registered mark D’AZUR for “hair spray, hand lotion, and
personal deodorant” in International Class 3 as to be likely to cause confusion when
used on applicant’s goods.2
This appeal ensued following a final refusal and a denial of applicant’s
request for reconsideration. The case is fully briefed, and an oral hearing was held
on January 16, 2014.
Request for Remand
During the oral hearing, applicant mentioned a third-party registration for
the mark CÔTE D’AZUR for goods in International Class 3 that issued on July 30,
2013, after briefing in this appeal had been completed. On January 21, 2014,
applicant filed a request to remand the application to the examining attorney for

1 The application was filed July 9, 2010 under Section 44(e) of the Trademark Act, 15
U.S.C. § 1126(e), based on a French registration. Applicant also claimed a priority filing
date of January 19, 2010 under Section 44(d) of the Trademark Act, 15 U.S.C. § 1126(d),
based on the filing date of the underlying French application.

The application contains the following translation statement: “The English translation of
“D’AZUR” in the mark is “OF AZURE.”

2 Registration No. 0836050, issued September 26, 1967. Second renewal.

The registered mark is in the form of a “typed” drawing. Prior to November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. Trademark Manual of Examining Procedure
(TMEP) § 807.03(i) (3d ed. 2013).
Serial No. 85081226
3

further examination and consideration of such evidence. The request is
accompanied by the declaration of Jena A. Sold, one of applicant’s attorneys.
A request that the Board remand an application for consideration of
additional evidence must include a showing of good cause therefor. In determining
whether good cause exists, the Board considers the reason given and the point in
the appeal process at which the request for remand is made. Generally, the later in
the appeal proceeding that the request is filed, the stronger the reason that must be
given for good cause to be found, for “[t]here is a point at which prosecution or
examination must end.” TBMP § 1207.02. See In re Luxuria s.r.o., 100 USPQ2d
1146, 1147 (TTAB 2011); and In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334
(TTAB 2009).
In this case, the request for remand has come very late, after briefing and
oral argument, and more than five months after the third-party registration issued.
According to Ms. Sold, “[a]s a matter of efficiency and client cost,” applicant only
became aware of the additional evidence on January 2, 2014, when applicant was
preparing for the January 16, 2014 oral hearing.3 Sold Decl., ¶ 3. However, the fact
that applicant chose to wait until January 2, 2014 to do a further search, and

3 Ms. Sold also states that on January 21, 2014, while preparing the request for remand,
she reviewed all pending and registered marks containing AZUR outside of International
Class 3, and discovered a third-party pending application for the mark L’AZUR. It does not
appear that applicant is seeking remand to make this information of record, but to the
extent it is, such a request must be denied. A third-party application has no evidentiary
value other than to show that it has been filed; moreover, as we stated above, there is a
point at which prosecution must come to an end. Therefore, we will not remand an
application merely because an applicant continues to do searches for marks that it believes
are relevant.
Serial No. 85081226
4

therefore did not discover the third-party registration until shortly before the oral
hearing, is not an acceptable basis for its delay.
Because the third-party registration issued on July 30, 2013, and given the
juncture of this appeal, we find that applicant has not shown good cause for
remanding the application. Accordingly, the request for remand is denied.4
Likelihood of Confusion
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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
We turn first to a consideration of the goods and channels of trade. We must
make our determinations under these factors based on the goods as they are
identified in the application and registration. See In re Elbaum, 211 USPQ 639
(TTAB 1981). The goods identified in the application include “sprays … for hair
styling and hair care,” “cosmetics, namely, … lotions for … hands” and “body
deodorants.” These items are legally identical to the “hair spray, hand lotion, and
personal deodorant” identified in the cited registration, and applicant does not
argue otherwise. The fact that some of the goods identified in the application are
identical to the goods identified in the registration weighs in favor of a finding of

4 We note that consideration of this registration would not have altered our determination
on the merits of this appeal, as “Côte D’Azur” is a recognizable geographic term that
conveys a different meaning and commercial impression from applicant’s mark and the
cited mark; it is not evidence that D’AZUR has a particular significance for the relevant
goods.
Serial No. 85081226
5

likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found
if there is likely to be confusion with respect to any item that comes within the
identification of goods in the application).
Because the identifications in the registration and application have no
restrictions on channels of trade, we must presume that the goods travel in all
channels of trade appropriate for such goods, such as drug stores. Further, because
at least some of the goods identified in the application are legally identical to the
goods identified in the registration, we must presume that these goods travel in the
same channels of trade, to the same classes of consumers. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994). Therefore, even if applicant actually sells its products
“at the Lancôme counter in stores,” as applicant contends, absent such a limitation
in the identification of goods, we are bound by the presumption that the channels of
trade and classes of purchasers for the goods identified in the application and
registration are the same.5
In view of the above, the du Pont factor of the channels of trade also favors a
finding of likelihood of confusion.
We next consider the conditions under which and buyers to whom sales are
made, i.e., “impulse” vs. careful, sophisticated purchasers. Applicant argues that
courts have recognized that consumers of personal care products tend to exercise a
high degree of care and brand awareness. In presenting these arguments, applicant

5 App. Br., p. 9 fn.3 (emphasis in original).
Serial No. 85081226
6

cites to four infringement cases in the federal courts. Two of these have not been
reported in any official reporter, and clearly were issued as non-precedential.6 The
other two cases are distinguishable.
In Clinique Labs., Inc. v. Dep Corp., 945 F. Supp. 547, 556 (S.D.N.Y. 1996),
the court pointed to evidence which showed that purchasers of skin care products
generally are women who exercise care in choosing what products to use on their
skin, especially the skin on their faces, and that Clinique’s products are sold in high
quality department stores. In this case, however, the legally identical hair spray,
hand lotions and deodorants that applicant and registrant sell under their
respective marks are not skin care products for the face, nor is there any evidence
that purchasers of these products exercise case in choosing hair spray and hand
lotion and deodorant.
The other case, Glow Indus., Inc. v. Lopez, 252 F. Supp.2d 962, 1001-1002
(C.D. Cal. 2003), recognized that “purchasers of fragrances and skin care products
tend to exercise a higher degree of care and brand consciousness.” However,
applicant’s goods also include hair spray and deodorant, and there is no evidence
these products would be in the same category as fragrances and skin care products.
In any event, even if we were to assume that purchasers for some of
applicant’s and registrant’s identified goods exercise care in making purchasing
decisions, the personal care products identified in the registration and application
are sold to the general public. On this record, we cannot consider the consumers to

6 Juicy Couture, Inc. v. L’Oreal USA, Inc., Civ. A. No. 04-7203, 2006 WL 1012939, at *29
(S.D.N.Y. 2006), and Origins Natural Resources, Inc. v. Kotler, Civ. A. No. 01-1881, 2001
WL 492429, at *1, *3 (S.D.N.Y. May 8, 2001).
Serial No. 85081226
7

be sophisticated, or to have any particular expertise. Further, the legally identical
hair sprays, hand lotions and deodorants identified in both the registration and
application can be relatively inexpensive, and subject to frequent replacement, such
that they are likely to be purchased without careful study of the trademark applied
to the product. Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597,
1602-03 (TTAB 1990); Helene Curtis Industries, Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). This du Pont factor also favors a finding of likelihood of
confusion.
The next factors we consider are the strength of the registered mark and the
number and nature of similar marks in use for similar goods. As applicant notes,
evidence of third-party use can be used to show that a registrant’s mark is weak
and thus entitled to a limited scope of protection. To this end, applicant points to
copies of three third-party registrations for AZUR-formative marks in International
Class 3, listings of search results for the terms “azur & cosmetics” and “azur & ‘sun
care’” from an Internet search engine, and a commercial search report that lists
what purports to be information about Federal registrations for AZUR-formative
marks for various goods and services.
It is well settled that third-party registrations are not evidence of use of the
marks shown therein, or that consumers have been exposed to them. AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973); and
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). Insofar as the
Internet search results summaries, which consist merely of listings of a small
Serial No. 85081226
8

amount of truncated text in which the term AZUR appears somewhere, are
concerned, they are of limited probative value because the listings do not show the
context in which the term is actually used on the webpage that can be accessed
through the search result link. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Thomas Nelson, Inc., 97 USPQ2d 1712,
1715 (TTAB 2011). With respect to the commercial search report, this report
provides merely a listing of marks, owner names and a truncated listing of goods or
services. As an initial matter, we point out that third-party registrations may not be
made of record by such a listing; submission of documents from the USPTO’s own
database is required. Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125, 1130 (TTAB 1995). However, because the examining attorney did
not advise applicant about this at a time that applicant could have cured this
failure, we will consider the search report listing for whatever probative value it
may have. And we must say that it has very limited value. The listings include, for
the most part, truncated information about the goods and/or services, e.g.,
“publications, namely, journals in” or “cellulose esters for industrial.” Further, they
are for the most part for goods and services very different from those at issue here.
Third-party registrations can be used in the same manner as dictionaries are
employed, namely, to show the meaning of a mark or a portion of a mark. See Mead
Johnson & Co. v. Peter Eckes, 195 USPQ 187 (TTAB 1977). In this case, the third-
party registrations on which applicant relies are for the marks VIVA AZURE (for
“depilatory and hair removal preparations”), AZUR FRAGRANCES (for “aromatic
Serial N

compou
soaps a
protecti
word D’
related)
applicat
show th
connect
consider
D’AZUR
strong m
En 1772
arbitrar
strong a
W
between
marks i
impress
proper t

7 These
commerc
commerc
o. 8508122
nds and e
nd deterg
on prepara
AZUR, an
to the hai
ion and th
at D’AZU
ion with p
ed a weak
appears t
arks. Pal
, 396 F.3
y term as
s a tradem
e turn th
applicant
n their e
ion.” Id.,
est is not

registration
ial search
ial search r
6
ssential oi
ents”), an
tions).7 N
d none ide
r spray, ha
e cited re
R (or, for
ersonal c
mark th
o be an ar
m Bay Im
d 1369, 73
applied to
ark.”). Th
en to the
’s mark
ntireties a
73 USPQ2
a side-by-s

s are presu
listing.
eport did n
ls for use
d AZŪR
one of the
ntifies goo
nd lotion a
gistration
that mat
are produ
at is entit
bitrary m
ports Inc.
USPQ2d
champagn
is factor al
du Pont
and
s to appe
d at 1691
ide compa
mably the
(We cann
ot include a
9
in the ma
(for sunsc
registrati
ds that ar
nd deodor
. Thus, th
ter, AZUR
cts such
led to a li
ark for the
v. Veuve C
1689, 169
e and spa
so favors a
factor of t
registrant
arance, so
, quoting
rison of th
three appli
ot determi
ny registra
nufacture
reen, sun
ons compr
e legally i
ants that
e third-pa
) has a p
that regis
mited sco
se goods,
licquot P
2 (Fed. Ci
rkling win
finding of
he similar
’s mark D
und, conn
du Pont,
e marks,
cant consid
ne this u
tion numbe
of cosmet
block, an
ises or in
dentical (o
are identif
rty regist
articular
trant’s m
pe of prote
and arbitr
onsardin M
r. 2005) (
e, and thu
likelihood
ities and
’AZUR. W
otation an
177 USPQ
but instea
ers most re
nequivocall
rs.)
ics, perfu
d related
corporates
r even clo
ied in both
rations do
significanc
ark should
ction. Rat
ary marks
aison Fo
“VEUVE i
s conceptu
of confusi
dissimilar
e analyze
d comme
at 567.
d ‘whether
levant from
y because
mes,
sun
the
sely
the
not
e in
be
her,
are
ndee
s an
ally
on.
ities
“the
rcial
“The
the
the
the
Serial N

marks a
persons
the par
USPQ2d
determi
include
between
declines
USPQ2d
It
mark, d
Applica
LANCÔ
a play o
the regi
party m
(discuss
3, there
persuas
W
strong,
o. 8508122
re sufficie
who encou
ties.” Coa
1713, 17
nation, we
goods tha
the mark
. Century
1698 (Fe
is applica
ue to the
nt contend
ME, and i
n the recog
stered ma
ark AZŪR
ed above)
also is
ive.
hile the
distinctive
6
ntly simil
nter the m
ch Servs.,
21 (Fed.
are mindf
t are ide
s which is
21 Real Es
d. Cir. 199
nt’s posit
large size
s that the
s, itself, a
nizable ph
rk D’AZUR
for sunscr
coexist on
room for
in applic
element
ar in term
arks wou
Inc. v. T
Cir. 2012)
ul that wh
ntical to
necessary
tate Corp.
2).8
ion that th
and placem
is stro
source ide
rase “eau
, and tha
een, sun b
the Princi
applicant’
ant’s mark
D’AZUR,
10
s of their
ld be like
riumph Le
(internal
ere, as in
registrant’
to support
v. Century
e is th
ent of th
ngly assoc
ntifier. Ap
d’_____,” t
t if registr
lock, and r
pal Regist
s mark. W
is visual
which ap
commerci
ly to assum
arning LL
citation o
the presen
s goods, t
a finding
Life of A
e domina
e and t
iated with
plicant als
hat the m
ant’s mark
elated sun
er for good
e do no
ly promine
plicant’s
al impress
e a conne
C, 668 F
mitted). I
t case, ap
he degree
of likeliho
merica, 97
nt feature
he use of t
applicant
o argues t
ark differs
D’AZUR
protectio
s in Inter
t find the
nt, we can
and regis
ion’ such
ction betw
.3d 1356,
n making
plicant’s g
of simila
od of confu
0 F.2d 874
of applica
he circum
’s house m
hat its ma
in sound
and the th
n preparat
national C
se argum
not ignore
trant’s m
that
een
101
this
oods
rity
sion
, 23
nt’s
flex.
ark
rk is
from
ird-
ions
lass
ents
the
arks
Serial N

share. I
Likeliho
incorpor
v. Josep
(applica
likely t
Internat
EBONY
EBONY
1979)
conditio
hair lot
D’AZUR
applican
A
associat
applican
with ap

8 As note
may be
applican
9 App. Br
10 We n
registrat
Internat
o. 8508122
n fact, ap
od of conf
ated withi
h E. Seag
nt’s mark
o cause c
ional Deve
DRUM fo
for cosm
(applicant’
ners and s
ion and a
are high
t’s mark w
lthough a
ed with [a
t has prom
plicant.10 T

d above, re
depicted in
t’s mark.
., p. 3.
ote that
ions, includ
ional Class
6
plicant’s m
usion has
n another
ram and
BENGAL
onfusion
lopment L
r hairdres
etics); In
s mark
hampoo is
fter-shavi
ly similar
ill not be
pplicant
]pplicant’s
oted the
hus, the r

gistrant’s m
all formats
applicant m
ing a regis
3), which
ark enco
been found
. See Coca-
Sons, Inc.,
LANCER
with BEN
td., 221 U
sing and
re Cosveti
HEAD ST
likely to c
ng lotion)
in sound
apparent.
argues th
house ma
separat
ecord does
ark regist
, including
ade of r
tration for t
is the only
11
mpasses r
where, a
Cola Bottl
526 F.2d
for club so
GAL for
SPQ 155,
conditione
c Laborato
ART CO
ause confu
. Moreove
, and the
at the “
rk ‘LANC
ely, or tha
not suppo
ered as a ty
with a low
ecord appr
he mark “Ô
registratio
egistrant’s
s here, the
ing Co. of M
556, 188
da, quinin
gin); Joh
156 (TTAB
r is likely
ries, Inc.,
SVETIC
sion with
r, when s
size and
O with c
ÔME’,”9 t
t consume
rt this ass
ped mark.
er case ini
oximately
de LANCÔ
n of record
entire m
entirety
emphis,
USPQ 105
e water an
nson Pub
1982) (ap
to cause
202 USP
for vitam
HEAD ST
poken, Ô
placemen
ircumflex”
here is no
rs would a
ertion.
As such, re
tial letter “
ten LANC
ME” (for “
that inclu
ark D’AZU
of one ma
Tennessee,
(CCPA 1
d ginger a
lishing Co
plicant’s m
confusion
Q 842 (T
ins for
ART for m
D’AZUR
t of the
is “stro
evidence
ssociate th
gistrant’s m
d,” as show
ÔME-form
toilet water
des the Ô
R.8
rk is
Inc.
975)
le is
. v.
ark
with
TAB
hair
en’s
and
in
ngly
that
e
ark
n in
ative
s” in
as a
Serial No. 85081226
12

With regard to the commercial impression of the marks, because D’AZUR is a
non-English word meaning “of azure,”11 applicant’s mark and registrant’s mark
convey similar commercial impression of color. To the extent applicant’s addition of
the O with circumflex evokes the French word “eau,” as applicant argues, given the
strength to be accorded registrant’s mark D’AZUR due to the fact that it is an
arbitrary term for personal care products, we find it likely that consumers who are
familiar with the hair spray, hand lotion and deodorants sold under registrant’s
mark D’AZUR, who encounter identical products sold under applicant’s mark
Ô D’AZUR, would view applicant’s mark as a variation of registrant’s mark, and
that they would ascribe a common source to the products sold under both marks.
Finally, we are not privy to the reasons D’AZUR and AZŪR coexist on the
Principal Register for goods in International Class 3. We must decide each case on
its own merits, and “[e]ven if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance of such prior registrations
does not bind the Board.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). We simply observe that there are differences in the goods in
the cited registration and the third-party registration that are not present in the
instant situation, which involves identical goods.

separate element, but there is no evidence as to how applicant has promoted any of the
marks. Applicant also made of record a registration for the mark “O LANCÔME” in stylized
form, described as “the letter ‘O’ and arrow design with the word ‘LANCÔME.’” This
registration is entitled to no probative value as it has been cancelled. In addition, the letter
‘O’ in this mark does not include the circumflex, and therefore would not have supported
applicant’s point in any event.
11 See translation statement in application.
Serial N

C
appeara
similari
favor of
C
W
and all
specifica
in the a
and re
contemp
this cas
D
Section
o. 8508122
onsidering
nce, sound
ties outwe
a finding o
onclusion
hen we co
of applica
lly addres
ppearance
gistrant's
oraneous
e is likely t
ecision:
2(d) of the
6
applicant
, meaning
igh their
f likelihoo
nsider the
nt's argum
sed herein
, sound a
mark D
use of the
o cause co
The refus
Trademar
's and reg
, and over
differences
d of confus
record an
ents rela
, we concl
nd comme
’AZUR, a
marks on
nfusion as
al to regis
k Act is af
13
istrant’s m
all comme
. Accordin
ion.
d the relev
ting there
ude that in
rcial impr
nd the
the identi
to the sou
ter based
firmed.
arks in th
rcial impre
gly, this d
ant likelih
to, includi
view of t
essions of
strength
cal person
rce or spon
on a likeli
eir entiret
ssion, we
u Pont fa
ood of con
ng those a
he substan
applicant'
of regis
al care goo
sorship of
hood of co
ies in term
find that t
ctor weigh
fusion fac
rguments
tial simila
s mark
trant’s m
ds involve
such good
nfusion u
s of
heir
s in
tors,
not
rity
ark,
d in
s.
nder