Meredith Grembowicz, M.D.

Trademark Trial and Appeal Board

Oct 31, 2012

No. 85174576 (T.T.A.B. Oct. 31, 2012)

Mailed: October 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Meredith Grembowicz, M.D.
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Serial No. 85174576
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Gregory C. Smith of Garvey, Smith, Nehrbass & North, L.L.C. for
Meredith Grembowicz, M.D.

Colleen Kearney, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Holtzman, Mermelstein and Kuczma, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Meredith Grembowicz, M.D.
to register the standard character mark DR. G'S SEA SALTS for
goods ultimately identified as "non-medicated bath salts
containing sea salt" in Class 3.1 The wording SEA SALTS is
disclaimed.

1 Serial No. 85174576, filed on November 11, 2010, based on an
allegation of first use and first use in commerce on August 1, 2010.
The application states that Dr. G identifies the pseudonym of Dr.
Meredith Grembowicz, a living individual.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 85174576
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark DR. G'S in typed form for "nail lotions and
solutions, hand and body lotions, skin lotions" in Class 3, as to
be likely to cause confusion.2
When the refusal was made final, applicant appealed. The
appeal has been fully briefed.3
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a comparison of applicant's mark, DR. G'S
SEA SALTS, with registrant's mark, DR. G'S, and a consideration
of the marks in their entireties in terms of sound, appearance,

2 Registration No. 2106476, issued October 21, 1997; renewed. The
registration also includes goods in Class 5 but the basis for the
examining attorney's refusal is limited to the goods in Class 3.
3 The examining attorney's objection to evidence (identified as Exhibit
A) which was submitted by applicant for the first time with her appeal
brief is well taken. This evidence is untimely and will not be
considered. See Trademark Rule 2.142(d).
Serial No. 85174576
3
meaning and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
The test under this du Pont factor is not whether the marks
can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to the
source of the goods offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific, impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
While marks must be compared in their entireties, one
feature of a mark may have more significance than another, and in
such a case there is nothing improper in giving greater weight to
the more dominant feature. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Registrant's entire mark is Dr. G'S, and the identical term
DR. G'S is the dominant part of applicant's mark. As applicant
points out, the added term SEA SALTS, although disclaimed,
results in a longer mark with more syllables than registrant's
mark. However, this wording merely provides descriptive
information about applicant's bath salts, and it therefore
contributes little to the commercial impression of the mark.
Serial No. 85174576
4
Consumers would look to the term DR G'S, rather than to this
descriptive element, to identify and distinguish source. See
National Data Corp., 224 USPQ at 752 (“a descriptive component of
a mark may be given little weight”). See also In re Chatam Int'l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)
(finding JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once
the commercial significance of the descriptive and otherwise non-
dominant terms JOSE, GOLD and ALE are properly discounted); In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997) (DELTA is the dominant portion of the mark THE DELTA
CAFE because the word CAFE is generic and has been disclaimed).
Further, the more significant term, DR. G'S, is the first
part of applicant's mark that purchasers will encounter and it is
therefore more likely to have a greater impact on purchasers and
be remembered by them. See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word). See also Palm Bay, 73 USPQ2d at
1692 (consumers are generally more inclined to focus on the first
word, prefix or syllable in a mark); Presto Products Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered").
Serial No. 85174576
5
The examining attorney notes the line of cases holding that
the addition of other matter to one of two otherwise similar
marks generally does not serve to avoid a likelihood of
confusion, and applicant notes that exceptions to this general
rule have been applied under circumstances where, for example,
there are recognizable differences in the shared term, or the
shared term is weak or descriptive of the goods. See In re
Champion Oil Company, 1 USPQ2d 1920, 1921 (TTAB 1986). Contrary
to applicant's contention, however, neither exception applies
here. There are no differences in the shared term - they are
identical; nor is there any evidence to show that DR. G'S is weak
such that the presence of the descriptive wording SEA SALTS in
applicant's mark would be sufficient to distinguish these marks
as a whole. Indeed, there is no evidence to show that DR. G'S is
anything other than a strong mark.4
Because the identical term DR. G'S is registrant's entire
mark and the most significant portion of applicant's mark, we
find that the marks as a whole are substantially similar overall
in sound, appearance, meaning and commercial impression.

4 Applicant's reliance on In re Hearst Corp., 982 F.2d 493, 25 USPQ2d
1238, 1239 (Fed. Cir. 1992), is misplaced. The Court, in its finding
that VARGAS and VARGA GIRL (both for calendars) were not confusingly
similar, specifically noted that "The appearance, sound, sight, and
commercial impression of VARGA GIRL derives significant contribution
from the component 'girl.'" Unlike that case, in the present case we
have found that the added wording SEA SALTS does not contribute
anything significant to the commercial impression of applicant's mark.
Serial No. 85174576
6
The du Pont factor of the similarities between the marks
favors a finding of likelihood of confusion.
We turn then to a consideration of the goods. Applicant's
goods are "bath salts" and registrant's goods include "hand and
body lotions, skin lotions." It is true, as applicant states,
that bath salts and lotions are specifically different goods.
They do not have the same properties or characteristics and they
are not interchangeable. However, the question is not whether
purchasers can differentiate the goods themselves, but rather
whether purchasers are likely to confuse their source. See
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Thus, it is not necessary that the respective goods
be similar or even competitive to support a finding of likelihood
of confusion. It is sufficient if the goods are related in some
manner and/or that the conditions surrounding their marketing are
such that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
We find that bath salts and lotions are closely related
personal care products. The examining attorney submitted over 50
use-based, third-party registrations showing, in each instance,
that the same mark has been registered for both applicant's and
Serial No. 85174576
7
registrant's types of products. The registrations include: Reg.
No. 3512131 (BECAUSE LOVE IS AN ART...), Reg. No. 3819457
(AQUASPARK), Reg. No. 3159918 (ARBONNE), Reg. No. 3049991 (LA
BELLE MAISON), Reg. No. 3124853 (TILLIA), and Reg. No. 3063668 (I
HATE PERFUME); each of which covers, inter alia, bath salts, on
the one hand, and hand, body and/or skin lotions, on the other.
Third-party registrations, while not evidence of use of the marks
therein, may serve to suggest that applicant's and registrant's
goods are of a type which may emanate from a single source. See
Albert Trostel & Sons, 29 USPQ2d at 1785-86.
In addition, the Internet printouts submitted by the
examining attorney show that bath salts and skin lotions are
offered at the same retail outlets, such as Whole Foods
(wholefoodsmarkets.com), Sephora (sephora.com), Bath & Body Works
(bathandbodyworks.com) and Crabtree & Evelyn (crabtree-
evelyn.com), often under the same or similar marks. For example,
the website for Crabtree & Evelyn offers "Crabtree & Evelyn India
Hicks Island Living Bath Salt" as well as various "Crabtree &
Evelyn" skin lotions; the website for Bath & Body Works offers
"Bath & Body Works" branded lotions and bath salts; the BURT'S
BEES website (burtsbees.com) offers BURT'S BEES Bath Crystals
(with natural sea salts) along with BURT'S BEES Replenishing Body
Lotion. It is clear from this evidence that bath salts and body
lotions are related products that in fact emanate from the same
Serial No. 85174576
8
source. The evidence also shows that these types of products are
sold in the same retail channels of trade, and that they would
come to the attention of the same ordinary consumers.
The du Pont factors involving the relationship between the
goods, as well as the channels of trade and classes of purchasers
for the goods, favor a finding of likelihood of confusion.
Applicant appears to argue that the absence of evidence of
fame of the registrant's mark should be treated as a factor in
applicant's favor. However, because this is an ex parte
proceeding, we would not expect the examining attorney to submit
evidence of fame of the cited mark. In re Thomas, 79 USPQ2d
1021, 1027 n.11 (TTAB 2006). Moreover, it is not necessary that
a registered mark be famous to be entitled to protection against
a confusingly similar mark. In re Big Pig Inc., 81 USPQ2d 1436,
1439 (TTAB 2006). This du Pont factor, as is normally the case
in ex parte proceedings, must be treated as neutral.
Nor does the asserted absence of evidence of actual
confusion weigh in favor of applicant, as applicant contends. We
have no probative evidence regarding the nature and extent of use
of the respective marks or whether a meaningful opportunity for
actual confusion ever existed. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992). As a result, this is another
factor which is rarely, if ever, relevant in an ex parte
proceeding. In re Kangaroos U.S.A., 223 USPQ 1025, 1026-1027
Serial No. 85174576
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(TTAB 1984). Thus, we consider this factor to be neutral, as
well.
In view of the foregoing, and because highly similar marks
are used in connection with closely related goods, likelihood of
confusion exists.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.