Mirela Marinescu

Trademark Trial and Appeal Board

May 7, 2014

No. 85565960 (T.T.A.B. May. 7, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mirela Marinescu
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Serial No. 85565960
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Brian P. Kinder of The Kinder Law Group, APC for Mirela Marinescu.

Ameen Imam, Trademark Examining Attorney, Law Office 113 (Odette Bonnet,
Managing Attorney).
_____

Before Cataldo, Lykos and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Mirela Marinescu (“applicant”), an individual United States citizen, seeks
registration of the trademark KARINA in standard character form for goods
identified as follows:
Cosmetics, namely, therapeutic and botanical lotions,
toners, moisturizers, body scrubs, facial scrubs, masks,
sunblocks and sun protection creams and lotions, for the
care, treatment, cleansing, and protection of the skin, in
International Class 3.1

1 Application Serial No. 85565960, filed March 9, 2012 based on alleged dates of first use
and first use in commerce of November 1, 1998.
Serial No. 85565960
2

The examining attorney refused registration of the mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when
used in connection with applicant’s goods, so resembles the registered mark
KARINA for the goods identified thereby as to be likely to cause confusion, to cause
mistake or to deceive. The cited mark is registered in typed form for “Manicure and
Pedicure Implements – Namely, Scissors, Nippers, Nail Files, Tweezers, and the
Like.”2 After the refusal became final, applicant filed a notice of appeal and a
request for reconsideration. The examining attorney denied the request for
reconsideration and this appeal ensued. Applicant and the examining attorney
have filed briefs.
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case,
applicant and the examining attorney have also submitted evidence and arguments

2 Registration No. 1313188, issued January 8, 1985; renewed. 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. TMEP § 807.03(i) (April 2014).
Serial No. 85565960
3

relating to trade channels, peaceful coexistence of applicant’s mark with the cited
mark, the existence of other registered marks, and a number of other
considerations. We will address each in turn.
1. The marks.
Considering first the marks of applicant and registrant, we see that they are
identical. Applicant concedes as much in her brief.3 We find also that the marks
engender the same commercial impression when considered in the context of
applicant’s and registrant’s respective goods. Accordingly, this du Pont factor
weighs in favor of a finding of likelihood of confusion.
2. The goods.
Applicant’s goods consist of a variety of cosmetics “for the care, treatment,
cleansing, and protection of the skin.” Applicant characterizes them as “liquid skin
care products… comprised of lotions and moisturizers.”4 Some of them are also
identified as “creams.” Applicant contends that her goods are “vastly unrelated” to
registrant’s goods, which she characterizes as “precision metal implements.”5
The goods of applicant and registrant are obviously different in nature.
However, it is not necessary that goods be similar or competitive in character to
support a holding of likelihood of confusion; it is sufficient that the goods be related
in some manner such that they could be encountered by the same persons under
circumstances that could give rise to the mistaken belief that they originate from or

3 Applicant’s brief at 8.
4 Id. at 5.
5 Id. Although registrant’s scissors, nippers and tweezers are likely to be made of metal,
the record indicates that “nail files” are not necessarily of metal.
Serial No. 85565960
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are in some way associated with the same producer. Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010). The examining attorney, in
support of his contention that the goods at issue are commercially related, has made
of record examples of web pages from third-party e-commerce sites offering goods
similar to those of both applicant and registrant. Among these, we note the
following:
- the website at offers products identified as facial cleanser, anti-
aging moisturizer, and cleansing gel as well as cuticle nippers, beauty
scissors, and manicure and pedicure kits.6

- the website at offers, under the category of skincare,
cleansers, moisturizers, toners and sunscreen. Under the category of “Tools
& Accessories / Manicure & Pedicure,” the same website offers several
manicure kits, nail files, a cuticle nipper, and a “pedicure tool.”7

- the website at offers products identified as “herbal
lotion” and “leg lotion” as well as “dual tweezer grooming set,” cuticle nippers,
nail clippers, “Manicure-to-Go,” and “Pedicure-to-Go.”8

- the website at offers skin lotions and creams to “help[ ] skin
replenish its moisture reserves,” toner pads, and “deep treatment mask,” as
well as nail files, foot files, cuticle nippers, and tweezers.9

- the website at offers body lotions, moisturizing stick,
moisture balm, hand cream, cleansing scrub mask, toners, and pore-cleansing
facial exfoliator, as well as foot files and nail blocks.10

- the website at offers skin lotions as well as “professional nail
supplies [for] manicures and pedicures,” including files and buffers.11

6 Office action of June 20, 2012 at 22-25, 31-32.
7 Id. at 26-30, 33-34.
8 Final Office action of February 1, 2013 at 72-73.
9 Id. at 57-63.
10 Id. at 64-67.
11 Id. at 68-69.
Serial No. 85565960
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- the website at offers hand cream, moisturizing foot
cream, as well as tweezers, nail clips, and cuticle scissors.12

- the website at offers skin lotion as well as manicure
files.13

These websites demonstrate that in the marketplace the goods of both applicant
and registrant are considered to be in the category of beauty products or body care
products. We find that customers would readily perceive both types of goods as
being within a single category of goods.
The record also shows examples of cosmetic creams or lotions that are likely
to be used together with manicure or pedicure implements, e.g., Sally Hansen brand
moisturizing foot creme;14 Foot Works brand foot scrub, Foot Works “dual action
pedi-peel”;15 Feet First brand peppermint foot creme;16 Bliss brand “foot patrol,”
Butter London brand “Rock Off Glycolic Callus Peel,” and “Stiletto Stick Hydrating
Heel Balm.”17 If goods are complementary in nature, or used together, this
relatedness can support a finding of likelihood of confusion. See, e.g., In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). In
connection with this point, it bears noting that applicant’s identification of goods is

12 Id. at 81-82.
13 Id. at 84-86.
14 Id. at 82.
15 Id. at 61.
16 Request for reconsideration at 15.
17 Office action of June 20, 2012 at 31-32.
Serial No. 85565960
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broad and would include within its scope scrubs and lotions for use on the feet. See
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) (“the question of registrability of an applicant's mark must be
decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an
applicant's goods…”).
As further evidence that applicant’s goods are related to those of registrant,
the examining attorney has submitted a number of use-based, third-party
registrations. Among these, we note that the following registrations list, in their
identifications of goods, both skin care lotions similar to those of applicant and
manicure/pedicure implements similar to those of registrant:
1607938 269066 2780306
3366302 3513276 3493335
3595571 3764481 3280448
3304149 4206395 4054200

Such third-party registrations that are based on use in commerce have some
probative value to the extent that they suggest that the listed goods are of types
which may emanate from the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). Although such registrations do not prove that the registered
marks are actually used in the marketplace on both skincare creams and
manicure/pedicure implements, they at least demonstrate that a number of
companies have sought and obtained registrations of marks for use on both types of
goods. Applicant’s contention that the liquid cosmetic goods identified in the above-
Serial No. 85565960
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listed registrations are not general skincare lotions and creams but rather liquids
that are closely related to nail care (such as nail strengthening lotions)18 is not
borne out by an examination of the registrations.
Applicant also argues that the registrations submitted by the examining
attorney “relate to the house marks of some of the largest brands in the United
States (i.e., Avon, The Body Shop, etc.)….”; and that “only the largest house marks
in the world would ever be expected to brand products derived from factories that
create metal implements for pedicures as well as products derived from laboratories
that create formulas for lotion and skincare products.”19 The evidence does not
support applicant on this point. None of the 12 registrations listed above belongs to
Avon or The Body Shop; nor is there evidence that any of the marks in those
registrations is a particularly well known “house mark.”
Applicant’s contention that the dissimilarity of the goods is established by the
fact that they are classified in different International Classes20 is unavailing. As
the examining attorney has observed, the classification of goods and services by the
U.S. Patent and Trademark Office is a purely administrative determination and has
no bearing on the issue of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); and National Football League v. Jasper
Alliance Corp., 16 USPQ2d 1212 (TTAB 1990). The Office’s classification of the
goods of applicant and registrant in different International Classes is not, as

18 Applicant’s brief at 11-12.
19 Id. at 5-6.
20 Id. at 5.
Serial No. 85565960
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applicant contends,21 a recognition that consumers are not likely to assume that
they emanate from the same company.
In light of the foregoing evidence, we find that the goods of applicant and
registrant are commercially related, and that the du Pont factor relating to the
similarity or dissimilarity of the goods weighs in favor of a finding of likelihood of
confusion.
3. Trade Channels.
The only evidence relating to the trade channels through which the goods at
issue travel is the third-party website evidence submitted by the examining
attorney, discussed above. This evidence shows that certain websites that feature
beauty and body care goods offer goods that are similar in type to the goods of both
applicant and registrant. Applicant argues, in response, that “[a]lthough a small
number of large, famous online retailers might carry both products, they would be
featured in different areas and would not likely be viewed together and/or connected
in the minds of consumers.”22 However, there is no evidence to suggest that the
online retailers discussed above are atypical in the field of beauty and body care
goods. We are also not persuaded that the goods would necessarily be “featured in
different areas” of stores, inasmuch as the record shows that some cosmetic creams
and lotions are for use on the feet and would likely be grouped with pedicure-related
goods. The same can be said of skin creams for use on the hands, examples of which

21 Id.
22 Id. at 10.
Serial No. 85565960
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are of record;23 such goods may be grouped, on store shelves or e-commerce
websites, with manicure-related goods. We find the evidence sufficient to show
that, in the marketplace, goods similar to those of applicant and registrant are
found in some proximity to each other, in that they are sometimes offered by the
same retailer. Accordingly, the du Pont factor relating to the similarity or
dissimilarity of established, likely-to-continue trade channels favors a finding of
likelihood of confusion.
4. Other registered marks.
Applicant argues that “the co-existence of other marks incorporating the term
KARINA mandate [sic] a finding that consumers are conditioned to distinguishing
between such marks… and that they are not likely to be confused….”24 Applicant
refers to the registered marks shown on the chart at page 14 of applicant’s brief.
The relevant du Pont factor is not the existence of other registered marks,
but “[t]he number and nature of similar marks in use on similar goods.” du Pont,
177 USPQ at 567 (emphasis supplied). The fact that a mark is registered does not
establish that the mark is in use or that the public has become familiar with it. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the U.S.
Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). There is, in fact, no
evidence of record to show that other KARINA marks are in use in the marketplace.

23 See, e.g., Office action of February 1, 2013 at 64.
24 Applicant’s brief at 6.
Serial No. 85565960
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Moreover, we note that most of the registrations listed on applicant’s chart belong
to the cited registrant; and that the two that belong to others are for goods (jewelry
and clothing) that are different from applicant’s goods. Such evidence does not
show that the cited mark is weak or entitled to a limited scope of protection.
5. Peaceful coexistence.
Applicant points out that she once owned Reg. No. 2619332 for the mark
shown below, covering a range of cosmetics and lotions for the skin.

That registration issued in the name of Mirela & Associates in 2002 and was
cancelled in 2009.25 Applicant contends that the cited registration “peacefully
coexisted with Applicant’s [Reg. No. 2619332] for nearly ten (10) years!”26
Applicant contends that its earlier registration demonstrates that the mark shown
above is not confusingly similar to any other registered mark: “Since the mark for
which registration is now sought is essentially identical to Applicant’s earlier
registered mark for identical goods, and since this latter mark is not confusingly
similar to any other registered mark, there is no basis for refusing registration
under Section 2(d).”27 The evidentiary significance of a subsisting registration is
defined by the relevant provisions of the Trademark Act, most notably Sections 7

25 See applicant’s response filed December 26, 2012 at 7-8.
26 Applicant’s brief at 4; see also id. at 7.
27 Id. at 10. We note in passing that applicant’s suggestion that the cited registered mark
“issued over the existence of Applicant’s earlier registration,” id., is not accurate. The cited
registration issued in 1985, more than seven years before issuance of Reg. No. 2619332.
Serial No. 85565960
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and 33, 15 U.S.C. §§ 1057 and 1115. As the examining attorney correctly points
out, an expired or cancelled registration is evidence of nothing other than the fact
that it issued. Sunnen Products Co. v. Sunex International Inc., 1 USPQ2d 1744,
1746-47 (TTAB 1987); United States Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ
815, 818 n.7 (TTAB 1986).
Under the guidance of du Pont, we must consider “[t]he length of time during
and conditions under which there has been concurrent use without evidence of
actual confusion.” 177 USPQ at 567. Concurrent registration is not the same thing
as concurrent use, and applicant has not presented any evidence to demonstrate
such concurrent use or the conditions of such use. Absence of actual confusion is
meaningful only where there is evidence that the marks at issue have been used for
a significant period of time in the same markets, such that there will have been a
reasonable opportunity for confusion to arise. Citigroup Inc. v. Capital City Bank
Group, Inc., 94 USPQ2d 1645, 1660(TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
1253 (Fed. Cir. 2011); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287
(TTAB 2007). In the absence of such evidence, the du Pont factor of concurrent use
is neutral.
6. Other considerations.
We note applicant’s suggestion, with reference to its earlier registration, that
“consistency in examination requires that the Board reverse the Examining
Attorney’s decision.”28 However, it is well established that we must decide each

28 Id. at 6.
Serial No. 85565960
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case on its own merits and that the allowance by the Office of earlier registrations
does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). We have before us no evidence of the circumstances under
which a different examining attorney allowed the issuance of Reg. No. 2619332.
We note also applicant’s contention “that the default is to grant a registration
– not refuse it.”29 We interpret this as a suggestion that any doubt should be
resolved in favor of applicant. However, in appeals from a refusal under Section
2(d) doubt is required to be resolved in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984).
7. Balancing the factors.
Having considered the arguments and evidence of record and all relevant du
Pont factors, including those not specifically discussed herein, we find that
applicant’s mark, used in connection with applicant’s goods, so closely resembles the
cited registered mark as to be likely to cause confusion, mistake or deception as to
the source of applicant’s goods.
Decision: The refusal to register is affirmed.

29 Id. at 13.