Marketing Fundamen-tal, Inc.

Trademark Trial and Appeal Board

Aug 15, 2008

No. 78856851 (T.T.A.B. Aug. 15, 2008)

Mailed: August 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marketing Fundamental, Inc.
________

Serial No. 78856851
_______

Joseph R. Cruse, Jr. of Law Offices of Joseph R. Cruse, Jr.
for Marketing Fundamental, Inc.

Benjamin U. Okeke, Trademark Examining Attorney, Law Office
112 (Angela B. Wilson, Managing Attorney).
_______

Before Seeherman, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Marketing Fundamental, Inc. seeks registration on the
Principal Register of the mark shown below for goods
identified as “beauty creams for body care; body and beauty
care cosmetics; cosmetic creams for skin care; cosmetics;
face creams for cosmetic use; lotions for face and body
care; lotions for skin care; make-up kits comprised of
cosmetics; non-medicated skin creams; skin cleansers; skin
creams; skin lightening creams; skin lotions; skin
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78856851
2
moisturizer; skin whitening creams” in International Class
3.1

Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark GENJI, in typed form, for
“colognes,” in International Class 3, as to be likely to
cause confusion, mistake or deception.2
When the refusal was made final, applicant appealed
and filed a request for reconsideration. On November 29,
2007, the examining attorney denied the request for
reconsideration. Thereafter, the appeal was resumed and
fully briefed. We affirm the refusal to register.
As a preliminary matter, in its brief, applicant
requested that the application be remanded because
“applicant was not afforded the opportunity to establish
that the mark has acquired distinctiveness through
continuous, exclusive and distinctive use” and “applicant

1 Application Serial No. 78856851, filed April 7, 2006, alleging
first use on July 1, 2001 and first use in commerce on July 7,
2001 under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

2 Registration No. 1143838, issued December 23, 1980, renewed.

Serial No. 78856851
3
is a world leader in the sale of skin and beauty creams and
can provide supporting evidence of this fact.” Br. p. 12.
First, we point out that a request for remand should
be filed as a separate paper, appropriately captioned,
rather than being included in the body of a brief.
Further, applicant has made its request in the alternative,
should the Board not be persuaded of the mark’s
registrability, and has not attempted to submit the
evidence for which remand is conditionally sought, stating
only that if the Board would consider such evidence
probative, it will submit it. Applicant is advised that,
once a decision is rendered on appeal, the application
cannot be reopened for the purpose of submitting additional
evidence. See Trademark Rule 2.142(g). Moreover, remand
may be granted upon a showing of good cause, and the later
in the appeal proceeding that the request for remand is
filed the stronger the reason needed for a finding of good
cause. In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB
2001); and In re Central Sprinkler Co., 49 USPQ2d 1194,
1194 n.2 (TTAB 1998) (applicant’s request for remand made
in its appeal brief in order to allow examining attorney to
consider additional third-party registrations denied
because such evidence could have been submitted earlier in
the prosecution).
Serial No. 78856851
4
The question of acquired distinctiveness is not in
issue in this appeal. Further, even if such evidence would
be relevant to the refusal based on likelihood of
confusion, applicant has not submitted a showing as to why
such evidence could not have been submitted earlier in the
proceeding. In view thereof, applicant has not
demonstrated good cause for remand, and applicant’s request
is denied.
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., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the goods
identified in the application and the cited registration.
It is well settled that goods need not be similar or
competitive in nature to support a finding of likelihood of
confusion. The question is not whether purchasers can
Serial No. 78856851
5
differentiate the goods themselves, but rather whether
purchasers are likely to confuse the source of the goods.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Further, we must consider the
cited registrant’s goods as they are described in the
registration and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registration describes goods broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registration
encompasses all goods of the type described, that they move
in all channels of trade normal for these goods, and that
they are available to all classes of purchasers for the
described goods. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992).
In support of his contention that the goods are
related, the examining attorney submitted several third-
party use-based registrations where the various cosmetic
and skin care items identified in applicant’s application,
and the cologne identified in the registrant’s
registration, have been registered by the same entity under
Serial No. 78856851
6
a common mark. See, e.g., Reg. No. 3326057 for the mark
LOVE CHIC BABY for, inter alia, cosmetics, creams, lotions,
skin moisturizers and cologne; Reg. No. 3313740 for the
mark PHINOMENAL for, inter alia, cologne, cosmetics and
makeup; Reg. No. 3245475 for the mark THE SCENT OF PEACE
for, inter alia, cologne, body lotions and makeup; Reg. No.
3326386 for the mark ADENOGEN for, inter alia, body creams,
body lotions, cologne, cosmetics and makeup; and Reg. No.
3309098 for the mark SKIN3 CUBED for, inter alia, beauty
cream for body care, body and beauty care cosmetics,
cologne, cosmetic rouges, lipstick and skin moisturizers.
These registrations serve to suggest that cologne, and
cosmetics and skin care preparations, would be sold by the
same entity under a common mark. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). We
find this evidence sufficient to establish the relatedness
of the involved goods in this case.
With regard to the channels of trade, inasmuch as
there are no limitations in the cited registration or the
application and the goods are closely related, we must
presume that applicant’s and registrant’s goods will be
sold in some of the same channels of trade and will be
bought by some of the same classes of purchasers. See
Serial No. 78856851
7
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Thus, applicant’s
unsupported arguments regarding its actual channels of
trade and attempts to limit registrant’s channels of trade
fail inasmuch as one may not restrict the scope of goods in
an otherwise unlimited identification. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
In view of the above, the du Pont factors of the
relatedness of the goods and the channels of trade favor a
finding of likelihood of confusion as to the mark in the
cited registration.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark GINGI and design and registrant’s mark
GENJI are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. The analysis is not whether the
marks can be distinguished when compared side-by-side.
Rather, we must determine whether the marks are
sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
Serial No. 78856851
8
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant argues that “GINGI is pronounced as “GIN’
and ‘G,’ whereas no evidence is advanced to show that the
Cited Registration is pronounced similarly or as another
name such as ‘GIN’ and ‘JAY’ or ‘JI.’” Br. p. 5. However,
it is well established that in making our determination we
must recognize that there is no correct pronunciation of a
trademark that is not an ordinary word; thus, a “correct”
pronunciation cannot be relied on to avoid a likelihood of
confusion. Centraz Industries Inc. v. Spartan Chemical Co.
Inc., 77 USPQ2d 1698, 1701 (TTAB 2006). GINGI and GENJI
certainly could be pronounced in a similar manner, with all
the ‘G’s’ pronounced like ‘j’ or with the first ‘G’
pronounced as a hard ‘g.’
As to appearance, there are similarities in that the
literal portion of both marks consists of five letters,
begins with G, has N in the middle and ends with I.
Moreover, because of the stylization in applicant’s mark
the second lower case g could appear as a lower case j.
Trademarks may be confusingly similar in appearance despite
the addition, deletion or substitution of letters. Weiss
Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar
Serial No. 78856851
9
to TMS, both for software); Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, supra (COMMCASH held
confusingly similar to COMMUNICASH, both for banking
services).
Applicant’s argument that the black rectangular
background with two dots dominates over the literal portion
GINGI is not tenable. The design in the mark is minimal
and does not present a sufficient difference to distinguish
the marks. See In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (greater weight is often
given to the word, because it is the word that purchasers
would use to refer to or request the goods).
In its first response (March 27, 2007), applicant
argued that “it appears that GENJI is a simple Japanese
translation relating to an ancient tribe”; however,
applicant did not present any evidence with regard to this
meaning. In its brief, applicant elaborates on this idea
and argues that “generic phrases can potentially have
multiple meanings” and “owners of marks employing common
names such as ‘GENJI’ are not afforded broad protection
over the use of a similar mark because of the number of
varying definitions that are potentially available.” Br.
p. 6. Applicant concludes that “GENJI has multiple
meanings as found in ancient Japanese Samurai novels and
Serial No. 78856851
10
should not be viewed as confusingly similar to the
Applicant’s mark, which specifically is an arbitrary name
and unique name.” Br. p. 8.
First, to the extent applicant is arguing that GINGI
and GENJI have different connotations, there is nothing in
the record to support either the asserted meaning of GENJI
or that general consumers would recognize this meaning and
if so distinguish the transliteration GENJI from GINGI as
another possible transliteration.
To the extent applicant is arguing that GENJI is a
generic or common term, there is nothing in the record to
indicate that it is generic for or commonly used in
connection with cologne. In fact, the meaning proffered by
applicant supports a finding that it is arbitrary for
cologne.
Overall we find that the marks GINGI and design and
GENJI are similar in appearance, sound and, as far as this
record shows, connotation, and they convey a very similar
commercial impression. Therefore, the factor of the
similarity of the marks weighs in favor of likelihood of
confusion.
Applicant’s arguments regarding the fourth du Pont
factor, i.e., the conditions under which and buyers to whom
sales are made, i.e., impulse versus careful, sophisticated
Serial No. 78856851
11
purchasing, do not lead us to a different conclusion.
Applicant argues that cosmetics are not inexpensive and
“the person purchasing colognes and skin creams these days
are [sic] so sophisticated as to not be confused.” Br. p.
10. Further, applicant argues that although “cologne is an
inexpensive product and available for purchase by
unsophisticated buyers,” the “remaining cosmetics industry
is not” and applicant’s products “are found in the
presenter bags at the Oscars and Grammy’s.” Reply Br. p.
1. While applicant’s actual goods may be expensive and
less susceptible to impulse purchasing, as noted above,
there are no limitations in the identification in the
application, and thus, as identified, applicant’s goods
could include inexpensive skin creams and cosmetics.
Moreover, to the extent more care is exercised in the
purchase of cosmetics and skin cream, the fact that
purchasers are sophisticated or knowledgeable in a
particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks
or immune from source confusion. See In re Decombe, 9
USPQ2d 1812 (TTAB 1988). We find that this factor does not
weigh in favor of applicant.
Applicant argues that its “Registered Mark and the
Cited Registrations have coexisted as Registered Trademarks
Serial No. 78856851
12
for over five years without any actual confusion between
the respective marks and/or the associated goods or
services” and “the lack of any actual confusion adds to the
argument that the Applicant’s mark and the Cited
Registration are not confusingly similar enough to warrant
a refusal.” Br. p. 11.
First, there is nothing in the record to show that
there has been a meaningful opportunity for such confusion
to have occurred. More importantly, in the context of an
ex parte proceeding, “the lack of evidence of actual
confusion carries little weight.” Majestic Distilling,
supra, 65 USPQ2d at 1205.
Finally, applicant argues that “there is no question
that the trademark professionals at the Trademark office
have found the GINGI mark to be allowable over (and thus
not likely to be confused with) GENJI.” Br. p. 10.
Applicant is referencing its claimed prior registration for
the mark GINGI (in typed form) for “cosmetics and non-
medicated skin care preparations.” Reg. No. 2555977. We
first note that the mark and goods in the application are
not identical to those in the prior registration. While
the registration is over five years old and is
incontestable pursuant to Section 15 of the Trademark Act,
15 U.S.C §1065, this has no effect on the question of
Serial No. 78856851
13
registrability (as distinguished from use) of a mark. See
In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d
1778, 1782 (Fed. Cir. 2001) (“A registered mark is
incontestable only in the form registered and for the goods
or services claimed”); and In re Best Software Inc., 63
USPQ2d 1109, 1112 (TTAB 2002). As stated by the Board in
In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986):
The cases are legion holding that each
application for registration of a mark for
particular goods or services must be separately
evaluated. See, for example, In re Loew’s
Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869
(Fed. Cir. 1985) [other citations omitted].
Section 20 of the Trademark Act, 15 USC Section
1070, gives the Board the authority and duty to
decide an appeal from an adverse final decision
of the Examining Attorney. This duty may not be
delegated by adoption of conclusions reached by
Examining Attorneys on different records.

Thus, the question of likelihood of confusion of the
mark for the goods identified in applicant’s registration
vis-à-vis the mark for the goods in the cited registration
is a different issue from the likelihood of confusion of
the mark for the goods identified in applicant’s
application vis-à-vis the mark for the goods in the cited
registration. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001). The mark in the
application is different from the mark in the prior
registration. The fact that applicant has registered the
Serial No. 78856851
14
mark GINGI in typed form simply means that applicant is not
claiming rights in any particular style of lettering for
that mark. While the protection accorded to the
registration is not limited to a particular type of script,
it does not provide applicant with the right to register
any form of the mark GINGI regardless of the registrability
questions that may be raised thereby. “Suffice it to say
that each case must be decided on its own merits based on
the evidence of record. We obviously are not privy to the
record in the files of the registered marks and, in any
event, the issuance of a registration(s) by an Examining
Attorney cannot control the result of another case.” In re
Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
In conclusion, we find that because the marks are
similar, the goods are related, and the channels of trade
and purchasers overlap, confusion is likely between
applicant’s mark and the mark in the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.