Mosa Boutique, LLC

Trademark Trial and Appeal Board

Sep 1, 2016

No. 86195441 (T.T.A.B. Sep. 1, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mosa Boutique, LLC
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Serial No. 86195441
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Matthew P. Frederick of Reed Smith LLP,
for Mosa Boutique, LLC.
Alison F. Pollack, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Seeherman, Mermelstein, and Ritchie,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Mosa Boutique, LLC (“Applicant”) seeks registration on the Principal Register of
the mark MOSA, in standard character format, for services identified as “retail
clothing boutique; online retail clothing boutique,” in International Class 35.1 The
Trademark Examining Attorney refused registration of Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s

1 Application Serial No. 86195441 was filed on February 17, 2014, under Section 1(b) of the
Trademark Act, alleging a bona fide intent to use the mark in commerce. The application
contains a statement: “The wording MOSA has no meaning in a foreign language.”

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mark, when applied to the identified services, so resembles the previously registered
mark MOSA,2 also in standard character format, for “retail store services in the field
of beauty supplies and equipment, including skin care products,” in International
Class 35, as to be likely to cause confusion, mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.3 We affirm the refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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 Company, 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/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41

2 Registration No. 4630569, issued November 4, 2014.
3 We note that in its reply brief, Applicant appears to object to the labeling of the Examining
Attorney’s brief, saying it was filed in TSDR as “Office Action Outgoing” and in TTABVUE
as “Paper Received at TTAB,” and claiming that the brief was “not properly filed and notice
not properly given.” 10 TTABVUE 5. We note that as of the time the papers were reviewed
by the Board, the brief appeared (and continues to appear) in TTABVUE, the Board’s
electronic file system, under the label “Examiner’s Statement.” In any event, it is clear from
the document itself that it is captioned “Examining Attorney’s Appeal Brief,” and that it was
timely served on Applicant’s attorney on May 26, 2016, thereby providing Applicant with
notice of the brief.
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USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont factors for which there were
arguments and evidence. The others, we consider to be neutral.
The Similarity/Dissimilarity of the Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The mark in the cited registration is MOSA, in standard character format.
Applicant’s mark also is MOSA, in standard character format. There is no argument
or evidence that this term has any meaning, or that the commercial impression would
be different when applied to Registrant’s services rather than to Applicant’s.
Accordingly, we find that the marks are identical in sight, sound, connotation, and
commercial impression, and that this first du Pont factor weighs heavily in favor of
finding a likelihood of confusion.
Strength of the Mark and Third Party Use
Applicant argues that the term “MOSA” is commonly used by third parties and
thus is only entitled to a narrow scope of protection. 7 TTABVUE 21. To this end,
Applicant submitted evidence of about a dozen third-party registrations that contain
the term “MOSA.” Applicant also submitted the specimens for these registrations as
well as some other accompanying evidence to show the use of these marks in the
marketplace. These include registrations for Maryland Oral Surgery Association
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MOSA (and design),4 for medical and dental services; TEAMOSA,5 for “tea-based
beverages”; MY MOSA,6 for “prepared wine cocktails”; MIDWEST ORGANIC
SERVICES ASSOCIATION MOSA (and design),7 a certification mark for “products
that are organically produced or processed/handled”; mosa (stylized),8 for gas
pressurized containers and procurement services “namely, purchasing cream and
food whippers, soda siphons and cream and soda chargers for others”; MOSA,9 for
advertising and marketing services; The MOSA Group,10 for educational services for
“personal and professional development”; CloudMosa,11 for computer software
development; MOSA SCORE,12 for advisory services on “loan and mortgage” and for
business management services;13 MOSA,14 for business management services in the
loan and mortgage industry and advisory services relating to the “loan and mortgage”
process, and HAIRMOSA for hair products.15

4 Registration No. 4578446.
5 Registration No. 4299388.
6 Registration No. 4246770.
7 Registration No. 3026528.
8 Registration No. 3649411.
9 Registration No. 4571972.
10 Registration No. 4571972.
11 Registration No. 4236364.
12 Registration No. 4361905.
13 Registration No. 4436991.
14 Registration No. 4035478.
15 Registration No. 4831881, see also hairmosa.me.
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We note that most of these third party registrations and uses contain terms other
than “MOSA,” such that MOSA would be understood as an acronym for the additional
words. Furthermore, only the final one, HAIRMOSA, is for goods similar to the
services at issue in this proceeding. This single use and registration is not sufficient
evidence for us to find that MOSA has a significance for retail clothing boutique
services or for retail store services in the field of beauty supplies and equipment. Cf.
Promark v. GFA Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015) (“Such third-
party registrations and uses are competent to show that the common term has an
accepted meaning in a given field.”)
Accordingly, the evidence is insuffficent for us to find that the cited registration
lacks commercial strength or is entitled to a limited scope of protection. Rather, the
term has no apparent meaning, and we find it to be arbitrary and inherently strong.
Services/Channels of Trade
When considering the similarity or dissimilarity of the services, we note that with
identical marks, as we have here, the services need be less similar for us to find a
likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Moreover, goods or services need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is enough that goods or services
are related in some manner or that some circumstances surrounding their marketing
are such that they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks used or intended to be used
therewith, to a mistaken belief that they originate from or are in some way associated
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with the same producer or that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant identifies “retail clothing boutique; online retail clothing boutique,”
while the services in the cited registration are “retail store services in the field of
beauty supplies and equipment, including skin care products.” Applicant argues first
that the identification in the cited registration is not sufficiently definite since it
contains the term “including skin care products” rather than “namely skin care
products.” We have no trouble, however, understanding Registrant’s identification of
retail services as naming beauty supplies and equipment that includes, but is not
limited to, skin care products. To the extent Applicant believes Registrant’s
identification to be inaccurate and wishes us to limit it, an ex parte proceeding is not
the means to do so.16
To demonstrate the relatedness of the identified services, the Examining Attorney
submitted websites from retailers that advertise the services identified by Applicant
on the one hand and those identified by Registrant on the other. These are Kate
Spade; Jonathan Adler; Chanel; Tory Burch; Burberry; Calvin Klein; Dior; Gucci;
Marc Jacobs; Michael Kors; Oscar de la Renta; and Tony Bahama. Applicant argues
that the Examining Attorney has not demonstrated a sufficient relationship between
the services, arguing that that to be sold “under the same roof” is not the standard

16 See In re Thor Tech Inc., 90 USPQ2d 1634, 1638, n.11 (TTAB 2009) (“Applicant was not
without a remedy. Section 18 of the Trademark Act of 1946 gives the Board the equitable
remedy to cancel registrations in whole or in part, ‘restrict the goods or services identified . .
. ‘”). Furthermore, despite Applicant’s protests, we do not find the prosecution of the cited
registration to be relevant.
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for confusion. 7 TTABVUE 13. In this regard, Applicant further argues that
“unrelated goods in the retail context are typically only held to be confusing when the
cited registration is a famous ‘designer mark.’” Id. at 14.17
Despite Applicant’s arguments, our case law does not support the theory that
retail clothing boutique services are related to retail services in the field of beauty
supplies and equipment only when they are sold under the mark of a famous designer.
Cf. Nina Ricci S.A.R.L. v. ETF Enterprises, Inc., 203 USPQ 947, 951-52 (TTAB 1979)
(considering the “fame and reputation” of opposer, Board also considered relatedness
of goods in sustaining opposition); David Crystal, Inc. v. Dawson, 156 USPQ 573, 574
(TTAB 1967) (Board considered “well known marks in the garment industry” but also
that the goods are “displayed and worn together.”). Given the arbitrary nature of
Registrant’s mark, and the evidence that retail clothing store services and retail
beauty supply services emanate from a single source, consumers who are familiar
with the mark MOSA for a retail beauty supply store are likely to believe, upon
encountering a retail clothing boutique operating under the identical mark, that the
services have a common source.
Applicant’s submission of evidence regarding clothing retailers that do not sell
retail beauty supplies or equipment does not detract from the fact that since others
clearly do, consumers may expect the services to derive from a single source. Indeed,

17 Applicant cited a non-precedential case which we find to be inapposite.
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they are not only sold “under the same roof,” but sometimes more closely side-by-side,
as evidenced by the following page18:

The Examining Attorney has demonstrated a relationship between the services,
which Applicant has not rebutted. Regarding channels of trade, to the extent that
Applicant offers “retail clothing boutique” services and Registrant offers retail beauty
supply store services, because the products sold through such services are both to
enhance one’s appearance, we find that these services may be offered to the same
class of customers. See Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937
(Fed. Cir. 1983).

18 Image from MarcJacobs.com; submitted by the Examining Attorney with the June 15, 2015
Final Office Action at 19.
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Accordingly, the second and third du Pont factors weigh in favor of finding a
likelihood of confusion.
II. Conclusion on Likelihood of Confusion
On balance, considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we find that the marks are identical in sight,
sound, connotation, and commercial impression, and the services are related and
would travel through some of the same channels of trade and be encountered by the
same classes of consumers. Thus, we find that there is a likelihood of confusion
between Applicant’s mark MOSA for “retail clothing boutique; online retail clothing
boutique,” and the mark in the cited registration, MOSA, for “retail store services in
the field of beauty supplies and equipment, including skin care products.”
Decision: The refusal to register Applicant’s mark is affirmed.