Lifetech Resources, LLCv.Myskin, Inc.

Trademark Trial and Appeal Board

Apr 10, 2013

No. 91200084 (T.T.A.B. Apr. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lifetech Resources, LLC
v.
Myskin, Inc.
_____

Opposition No. 91200084
against Serial No. 77960706
_____

Karen D. McDaniel and Danielle I. Mattessich of Merchant & Gould P.C.
for Lifetech Resources, LLC
Rajiv Ranjan, pro se,
for Myskin, Inc.
_____

Before Bucher, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Myskin, Inc. (“applicant”) seeks registration on the Principal Register of the
mark SKINTELLIGENCE (in standard character format) for a computerized
system (hardware and software) to analyze skin (in International Class 9)
identified as follows:
Opposition No. 91200084
2

communications software for connecting to standalone and
networked computers consisting of grouping and recommendation
algorithms for grouping people based on skin characteristics and
providing recommendations for skin care products; computer
hardware and peripheral devices and computer software for data
communication and translating and transmitting data sold
therewith; computer hardware and software, for use with medical
patient monitoring equipment, for receiving, processing,
transmitting and displaying data; computer software and hardware
for grouping people having similar characteristics and
recommending products and regimens; computer programs for
categorizing persons into various skin profiles and recommending
products and regimens for skin care; computer software for
controlling and managing patient medical information; computer
software for use in managing medical records and patient
information and for medical practice management; computer
software for the medical field, namely, for scheduling, registration,
workflow, processing, reporting, and billing; computer software for
organizing and viewing digital images and photographs; computer
software for transmitting, distributing, disseminating, receiving,
and displaying of medical images and medical documents over local
area networks, wide area networks, and global computer networks;
computer software for grouping people based on skin characteristics
and recommending skin care products and regimens; portable and
handheld digital electronic devices for recording, organizing,
transmitting, manipulating, and reviewing text, data, image, and
audio files; remote control telemetering machines and apparatus;
electronic communications systems comprised of computer hardware
and software for the transmission of data between two points;
optical communications systems comprised of optical and electronic
hardware and computer software for the transmission of data
between two points; communication software for providing access to
the internet; computer search engine software; computer software
for application and database integration; computer software for
creating searchable databases of information and data; computer
software for wireless content delivery; computer software platforms
for grouping people based on skin characteristics and recommending
products and regimens for skin care; computer software that
provides web-based access to applications and services through a
web operating system or portal interface; interactive computer
kiosks comprising computers, computer hardware, computer
peripherals, and computer operating software, for use in grouping
people based on skin characteristics and recommendation of
products and regimens for skin care; medical software for grouping
people based on skin characteristics and recommendation of
Opposition No. 91200084
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products and regimens for skin care; computer software for the
collection, editing, organizing, modifying, book marking,
transmission, storage and sharing of data and information;
computer hardware and computer software programs for the
integration of text, audio, graphics, still images and moving pictures
into an interactive delivery for multimedia applications; computer
software for the databasing, visualization, manipulation, virtual
reality immersion and integration of geographic information with
on-line member communities; database management software for
grouping and retrieving information about groups of people who
have similar skin characteristics for recommendation of products
and regimens for skin care; graphical user interface software.1
Lifetech Resources, LLC (“opposer”) filed a notice of opposition on the ground of
priority and likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d). Opposer alleges that applicant’s mark, when applied to
applicant’s goods, so resembles the SKINTELLIGENCE mark that opposer had
previously use and registered in connection with “cosmetics; namely, skin cleanser
preparations, skin freshener preparations, skin moisturizer, toning lotion, emollient
cream, toning mask, shaving cleanser preparations, eye toning gel, face makeup
body shampoo, hair shampoo, hair conditioner” in International Class 3,2 as to be
likely to cause confusion, to cause mistake, or to deceive.
Applicant, in its answer, admits that opposer is the owner of the claimed
registration, but denies the remaining salient allegations. The record consists of the
testimonial deposition of Beverly Halcon, opposer’s vice-president, as well as
opposer’s Notice of Reliance received by the United States Patent and Trademark
Office on July 23, 2012. Only opposer filed a final brief in this proceeding.

1 Application Serial No. 77960706 was filed on March 17, 2010, based on an allegation of
applicant’s bona fide intention to use the mark in commerce.
2 Registration No. 1783801 issued on July 27, 1993; renewed.
Opposition No. 91200084
4

Opposer established its standing to oppose registration of the involved
application. In particular, opposer properly made of record its pleaded registration
for SKINTELLIGENCE registered in connection with a wide variety of cosmetics
and hair care and skin care products. Thus, opposer has shown that it is not a mere
intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982). Moreover, in view of opposer having established that it is the
owner of a valid and subsisting registration of its SKINTELLIGENCE mark,
opposer’s priority is not in issue with respect to the enumerated goods in
International Class 3. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Strength of opposer’s Mark
Opposer’s mark is conceptually strong inasmuch as the coined term
“Skintelligence,” telescoping the words “skin” and “intelligence,” is not deemed to be
merely descriptive when used in connection with cosmetics.
More significantly, opposer makes the argument that its mark is commercially
strong due to the fame or renown of its prior mark. As noted by opposer, fame is
entitled to great weight in our likelihood of confusion analysis. A famous mark is
one “with extensive public recognition and renown.” Bose Corp. v. QSC Audio Prods.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). In fact, fame of an opposer’s
mark, if it exists, plays a “dominant role in the process of balancing the du Pont
Opposition No. 91200084
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factors” inasmuch as “[f]amous marks thus enjoy a wide latitude of legal
protection.” Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000). This is true as famous marks are more likely to be remembered and
associated in the public mind than a weaker mark, and are thus more attractive as
targets for would-be copyists. Indeed, “[a] strong mark … casts a long shadow which
competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods and services identified by the marks at issue, “by the
length of time those indicia of commercial awareness have been evident,” by
widespread critical assessments and through notice by independent sources of the
products and services identified by the marks, as well as by the general reputation
of the branded products and services. Bose, 63 USPQ2d at 1305-06, 1309.
Although raw numbers of product and service sales and advertising expenses
may have sufficed in the past to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for comparable types of products or
services). Id. at 1309.
Fame “varies along a spectrum from very strong to very weak.” In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003). “Because of the
extreme deference that we accord a famous mark in terms of the wide latitude of
legal protection it receives, and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of the party asserting that its mark is famous to
Opposition No. 91200084
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clearly prove it.” Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597
(TTAB 2009); and Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1904 (TTAB 2007).
As to opposer’s volume of sales, in light of the fact that the testimony of Beverly
Halcon, opposer’s vice-president, has been marked “confidential,” we cannot
disclose the precise amounts of these sales. Suffice it to say that with steady
growth each year since 1990, the widespread and extensive promotion by opposer
and its exclusive marketing partner, Market America,3 of the SKINTELLIGENCE
mark on a variety of skin care products, has resulted in an impressive level of
annual sales. The sales channels used by Market America include major websites
such as shop.com and amazon.com, sales through doctor’s offices, salons, spas, and
small stores, and to a variety of nation-wide distributors. Opposer has enhanced the
strength of its SKINTELLIGENCE mark through successful enforcement efforts –
a series of successful cease-and-desist letters and actual litigation, resulting in the
junior user changing its name.
Ms. Halcon’s testimony shows that opposer started selling products under the
SKINTELLIGENCE mark in 1990, obtained its federal registration in 1993, and
has achieved commercial success and a high degree of renown. As a result of this
evidence of opposer’s extensive sales, we find that opposer’s SKINTELLIGENCE
mark, when used in connection with its goods has achieved a high degree of public
recognition by the relevant consuming public and due to this marketplace

3 Market America is one of the largest Internet retailers in the world, and has promoted
and sold the SKINTELLIGENCE brand exclusively since 1990.
Opposition No. 91200084
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strength, it is entitled to a broad scope of protection. On the other hand, we cannot
agree that opposer’s mark qualifies for the label of “famous” at the far end of the
spectrum. Specifically, on this record, we have no real context in which to place
these raw statistics relative to comparable types of products or services, and hence,
find the showing to be insufficient to establish that the SKINTELLIGENCE brand
is famous for purposes of likelihood of confusion. In summary, this critical du Pont
factor weighs slightly in favor of a finding of likelihood of confusion.
Identical Marks
Applicant has applied to register a mark that is virtually identical to
opposer’s well-known mark. This is a significant factor in favor of a finding of a
likelihood of confusion.
Relationship of the Goods
We next turn our attention to the relationship of the goods as they are identified
in the registration and application. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
We begin our discussion of this factor by noting that where the respective
marks are identical, as is the case herein, the relationship between the goods of
opposer and applicant need not be as close to support a finding of likelihood of
confusion as might apply where differences exist between the marks. In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); and Amcor, Inc. v. Amcor Indus.,
Opposition No. 91200084
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Inc., 210 USPQ 70, 78 (TTAB 1981). Furthermore, to the extent opposer’s mark has
achieved some degree of renown, that is an additional reason for a junior party to
keep a distance from the senior user’s established mark.
Certainly, it is settled that it is not necessary that the respective goods be
identical or even competitive in order to find that they are related for purposes of
our likelihood of confusion analysis. That is, the issue is not whether consumers
would confuse the goods themselves, but rather whether they would be confused as
to the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The
goods need only be sufficiently related that consumers would be likely to assume,
upon encountering the goods under similar marks, that the goods originate from,
are sponsored or authorized by, or are otherwise connected to the same source. See
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); and In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The goods identified in opposer’s registration are all cosmetics, skin care
products and hair care products, in International Class 3, while applicant’s goods
involve a computer system designed to analyze skin, placed with other computer
hardware and software in International Class 9.
In order to demonstrate the close relationship of these different goods, opposer
has provided for the record actual usage of the same marks for these two types of
goods as well as copies of use-based, third-party registrations owned by the same
set of third parties:
Opposition No. 91200084
9

skin care products, namely,
wrinkle removing skin care
preparations

PhysioAge 4

computer software for assessing
the physiological age of an
individual, for analyzing and
reporting medical and clinical
research data securely over the
internet to clients with
authorization, for uploading data
from multiple data collection sites
to a web-based storage site, all for
the purpose of assessing the
physiological changes and diseases
associated with human aging

cosmetic products, namely, cleansing creams and gels, cosmetic cream for
skin care, milks, oils, soaps, sun-tan lotions and preparations, sun
protecting preparations, face cream, lotions, cosmetic preparations for
whitening skin, facial and body scrubs, make-up remover, beauty lotions,
beauty serums, skin conditioning creams for cosmetic purpose
IOMA BEAUTY DIAG 5
computer software for the analysis of data collected by probes analyzing
the characteristics of the skin; electronic and microelectronic components,
namely, microchips; optical, measuring and checking instruments,
namely, physiological sensors for hydration, trans-epidermal water loss,
temperature, pigmentation depth and roughness, pressure modulus,
pressure regulators, all these goods for scientific and industrial use;
electric switchers, electric transformers, electric accumulators, electric
regulators, electric flow controllers; analysis apparatus for non medical
use which can be composed of pressure sensors and/or picture sensors;
electronic data processors; computers; computer screens
6
7

creams for the face, milks for the
face, lotions for the face, non-
medicated sun care preparations

8
VICHY 9

personalized skin care analysis for
firmer, wrinkle-free and younger
looking skin

4 Registration No. 3093890 issued on May 16, 2006; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
5 Registration No. 3658207 issued on July 21, 2009. No claim is made to the exclusive right
to use the word “Beauty” apart from the mark as shown.
6 http://www.ioma-paris.com/en as accessed by the applicant on July 18, 2012.
7 http://www.vichyusa.com/_us/_en/
8 http://www.vichyusa.com/_us/_en/
9 Registration No. 3278055 issued on August 7, 2007; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
Opposition No. 91200084
10

10
cosmetic skin lotion

Beiersdorf Analyzes
Consumer Skin at Its
New Eucerin Skin
Institute
Posted: February 7, 2012 11
EUCERIN 12
EUCERIN SKIN CODE
READER
a scientific, photographic, optical
and measuring instrument,
namely, optical mirrors for the
assessment of cosmetic skin
conditions such as moisture,
sebum, elasticity, redness and
wrinkles in the face, not for
medical purposes

body creams; body oils; body
scrubs; body washes; skin care
boosters, skin cleansers; skin
conditioners; skin creams; skin
masques; skin moisturizers

DERMALOGICA 13

skin care services; skin analysis
and consultation services rendered
in connection therewith
14
cosmetic and dermatological
preparations and products, namely,
non-medicated facial cleansers,
glycolic acid cleansers, creams,
lotions, eye gels, shampoo,
moisturizers, facial peels, bleaching
solutions, retinol facial creams and
lotions and medicated and non-
medicated soaps15
16
RX SYSTEMS PF
test ensures that the skin care
program and products are
individualized to one’s skin type

10 http://www.drugstore.com/eucerin-sensitive-skin-gentle-hydrating-
cleanser/qxp40001?catid=182291
11 http://www.cosmeticsandtoiletries.com/networking/news/company/138854274.html
12 Registration No. 1224781 issued on January 25, 1983; second renewal.
13 Registration No. 3466148 issued on July 15, 2008.
14 http://www.rxsystemspf.com/details.aspx?navid=161
15 Registration No. 3142934 issued on September 12, 2006; Section 8 affidavit (six year)
accepted. No claim is made to the exclusive right to use the wording “Rx Systems” apart
from the mark as shown.
16 http://www.rxsystemspf.com/skinquiz.aspx
Opposition No. 91200084
11

17
skin care products, such as
cleansing lotions, toners, sun
screens, eye creams, moisturizers,
protective creams, night creams,
masks, body lotions18
19
MARIO BADESCU
SKIN CARE
skin care consulting questionnaire
takes customer information into
account to form customized and
specialized skin care product
recommendations
non-medicated balms for use on
skin; non-medicated ointments for
the prevention and treatment of
sunburn; skin creams; skin lotions;
skin moisturizer; sun block 20
computer software for analyzing
and providing quantitative
feedback about an individual's skin
and moles

This evidence demonstrates that it is not uncommon for manufacturers of skin
care products to provide computerized programs designed to group persons based on
skin characteristics, often resulting in recommendations of specific products and
regimens for skin care. These are clearly available online at the same websites
marketing skin care products. According to some of the store locator information on
a variety of websites shown in the record, the same is true in brick-and-mortar
retail locations.
Accordingly, we must presume that computer software of the type being
proposed by applicant could well be available online or in brick-and-mortar retail
locations where cosmetics and skin care products are available, that they would be

17 http://www.mariobadescu.com/buffering-lotion
18 Registration No. 2187959 issued on September 8, 1998; renewed. No claim is made to the
exclusive right to use the words “Skin Care” apart from the mark as shown.
19 http://www.mariobadescu.com/questionnaire.aspx
20 Registration No. 3909249 issued on January 18, 2011. No claim is made to the exclusive
right to use the word “Skin” apart from the mark as shown.
Opposition No. 91200084
12

located within the same trade channels as cosmetic, skin care and hair care
products, and would be targeted to the same classes of ordinary consumers.
Accordingly, these several related du Pont factors all weigh in favor of a finding of
likelihood of confusion.
Weighing the factors
In view of the fact that the opposer’s mark is strong both conceptually and
commercially, that the marks are identical, and that the goods are related, we find
that applicant’s registration of its mark is likely to cause confusion. Accordingly, all
these critical du Pont factors favor a finding of likelihood of confusion.
Decision: The opposition to register applicant’s mark under Section 2(d) of the
Lanham Act is sustained, and hence, registration to applicant is hereby refused.