Murad, Inc.

Trademark Trial and Appeal Board

Dec 9, 2015

No. 86286112 (T.T.A.B. Dec. 9, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Murad, Inc.
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Serial No. 86286112
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Michael A. Painter of Isaacman, Kaufman & Painter, P.C.
for Murad, Inc.

Jason Malashevich, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____
Before Zervas, Taylor, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Murad, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark INVISIBLUR PERFECTING SHIELD (standard characters) for “Non-
medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners
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and peels” in International Class 3 (“Application”).1 The Examining Attorney
required a disclaimer of PERFECTING SHIELD based on descriptiveness of the
wording. See 15 U.S.C. §§ 1052(e)(1), 1056(a). Applicant provided only a disclaimer
of SHIELD and argued against the requirement as to PERFECTING. Additionally,
the Examining Attorney refused registration of Applicant’s mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), as likely to cause confusion with the
registered mark INVISIBLEND (standard characters) for “cosmetic creams;
cosmetic creams for skin care; cosmetic preparations for skin care; face creams for
cosmetic use,” also in International Class 3 (“Registration”).2 After the Examining
Attorney made the requirement and refusal final, Applicant appealed to this Board.
We affirm both the disclaimer requirement and the Section 2(d) refusal to register.
I. Disclaimer Requirement

“The PTO can condition the registration of a larger mark on an applicant's
disclaimer of an ‘unregistrable component of a mark otherwise registrable.’
15 U.S.C. § 1056(a).” In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 116
USPQ2d 1262, 1264 (Fed. Cir. 2015). Descriptiveness of particular wording can
form the basis of a proper disclaimer requirement. See id.
First, we consider the requirement to disclaim PERFECTING based on its
descriptiveness of the function of the skin care preparations identified in the
Application. We take judicial notice of the relevant definition of “perfect” as a verb,

1 Application Serial No. 86286112 was filed May 20, 2014 based on 15 U.S.C. § 1051(b).
2 Registration No. 4712733 issued October 13, 2010.
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“to make perfect: improve, refine.”3 The record includes voluminous evidence
showing descriptive use of “perfecting” in the cosmetics field.4 Examples include:
• JERGENS BB Body Perfecting Skin Cream.5
• RADICAL Skincare’s Skin Perfecting Screen6 to help achieve “the perfect
healthy radiance.”
• FACES Perfecting Skin Smoother7 to smooth out “skin imperfections.”
• OLAY BB Cream Skin Perfecting Tinted Moisturizer8 with Sunscreen
with “6 skin-perfecting benefits.”
• EUCERIN REDNESS RELIEF Daily Perfecting Lotion.9
• NUXE Aroma-Perfection Skin-Perfecting Purifying Lotion10 providing
“Double action for oily skin: purifying and skin perfecting.”

3 Merriam-Webster Online Dictionary, http://www.merriam-webster.com/dictionary/perfect,
© 2015 Merriam-Webster, Inc. The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries
that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
4 September 8, 2014 Office Action at 5-9; 12-13; 19-31; October 1, 2014 Suspension Letter at
2-25. Although not objected to by Applicant, we did not consider the evidence regarding
JOHNSON’S Skin Perfecting Oil because it appears to come from a United Kingdom-based
retail or promotional website showing product prices in British pounds. September 8, 2014
Office Action at 10-11. We did not consider the evidence regarding GAZELLI White Oil
Illuminating Perfecting Skin Polish for similar reasons. Id. at 14-18.
5 September 8, 2014 Office Action at 5.
6 Id. at 7-8.
7 Id. at 12.
8 Id. at 22-23.
9 Id. at 26.
10 Id. at 28.
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• The Popsugar.com webpages entitled “Learn How to Create a Modern
Holiday Makeup Look,”11 stating that “Achieving a flawless makeup look
starts with perfecting your skin. Jennings always dabs on a little
moisturizer and eye cream before applying foundation ....”
• PHILOSOPHY NO REASON TO HIDE Instant Skin-tone Perfecting
Moisturizer Broad Spectrum SPF 20 Sunscreen,12 with product details
indicating that “instantly the hydrating formula perfects the appearance
of uneven areas.”
• PRIORI Perfecting Concealer SPF 25.13
These examples and the other evidence of record proves common use of the word
“perfecting” in the cosmetics industry to describe the function of creams, such as
those identified in the Application, that give skin an improved or refined
appearance.
Applicant offers no criticism of the descriptiveness evidence, but rather focuses
its argument against the disclaimer on a 2010 non-precedential decision of the
Board reversing a descriptiveness refusal of a different mark, PERFECTING
SERUM for “skin moisturizer.” See In re Murad, Serial No. 77556539. Non-
precedential decisions do not bind the Board but may, of course, be cited and
considered for whatever persuasive value they have. In re Fiat Group Marketing &
Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014). The

11 October 1, 2014 Suspension Letter at 2-3.
12 Id. at 7-8.
13 Id. at 21.
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Board, however, does not encourage the practice. Applicant concedes that the Board
is not bound in this case, but contends that the Examining Attorney erred by
ignoring the decision, which Applicant maintains is “highly persuasive evidence.”14
Indeed, the Board is not bound by this non-precedential decision, and “prior cases,
precedential or not, are only useful to the extent that the facts in the prior cases are
somewhat analogous to the facts in the current case.” Inter IKEA Systems. B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1742 (TTAB 2014). Furthermore, each case must be
decided on its own facts and merits. In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (Each case must be assessed “on the record of
public perception submitted with the application”). In contrast to the prior case, in
this case, Applicant failed to counter the voluminous evidence of third-party
descriptive use and offered no proof of successful enforcement efforts to stop third-
party use. We must conclude on this record that many others in Applicant’s
industry use the term PERFECTING on an ongoing basis, and consumers
frequently encounter this term to describe the purpose of certain creams and
cosmetic preparations.
Finally, based on a list of marks and Serial Numbers in its Appeal Brief,
Applicant also claims that the USPTO has registered a number of other marks
containing the word PERFECTING with no disclaimer of it for goods in
International Class 3.15 The Examining Attorney correctly objects that Applicant
failed to properly make any prior registrations of record by merely listing them but

14 4 TTABVUE at 6.
15 4 TTABVUE at 6-8.
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not submitting copies of the registrations themselves as required.16 See In re
Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012)
(mere listing of third-party registrations insufficient); Trademark Trial and Appeal
Board Manual of Procedure § 1208.02 (June 2015) (“Mere listings of registrations ...
are not sufficient to make the registrations of record”). Because Applicant did not
properly introduce the third-party registrations and they are not part of the record,
we decline to consider them.
Based on the strong evidence that PERFECTING describes a feature of the
goods, in that they make skin appear perfect or flawless, we affirm the disclaimer
requirement.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. 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 Co., 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 relatedness of the goods. See In re Chatam Int’l Inc., 380
F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).

16 6 TTABVUE at 10.
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With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test
assesses not whether the marks can be distinguished in a side-by-side comparison,
but rather whether their overall commercial impressions are so similar that
confusion as to the source of the goods offered under the respective marks is likely
to result. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102
USPQ2d 1546, 1551 (TTAB 2012).
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the goods emanate from the
same source. The comparison must be based on the identifications in the
Application and Registration. See Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
We first consider the relatedness of Applicant’s and Registrant’s goods, and find
that this du Pont factor weighs heavily in favor of likely confusion because the goods
are identical in part. The Registration broadly identified “cosmetic creams,” or
creams for cosmetic purposes, includes the non-medicated skin care creams
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identified in the Application. The goods, therefore, are legally identical. Applicant
does not argue that there are any differences in the goods.
We also presume, as we must, that Applicant’s and Registrant’s identical goods,
for which both identifications are unrestricted, travel through the same channels of
trade to the same class of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); see also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that
where the identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”). Because the
goods are common consumer goods, and particularly, because registrant’s goods are
non-medicated, we find that consumers of Applicant’s and registrant’s goods include
members of the general public. Applicant makes no argument that the channels of
trade differ. Accordingly, given the identical goods and lack of trade channel
restrictions in the identifications of goods, we deem the trade channels identical,
and this du Pont factor favors likely confusion.
The crux of the likelihood of confusion analysis in this case rests on the
similarity of the marks themselves, which we compare in their entireties. When the
goods are identical, as they are at least in part in this case, “the degree of similarity
necessary to support a conclusion of likely confusion declines.” See Century 21 Real
Estate v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). INVISIBLUR clearly dominates the mark in the Application. INVISIBLUR
appears first in the mark, and “it is often the first part of a mark which is most
Serial No. 86286112
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likely to be impressed upon the mind of a purchaser and remembered.” Presto
Products v. Nice-Pak Products, 9 USPQ2d 1895 (TTAB 1988); see also Palm Bay, 73
USPQ2d at 1692 (noting the “prominence” resulting from being the first word in the
mark). In addition, the other wording, PERFECTING SHIELD, is highly descriptive
of the goods as a reference to the function of the product, and therefore less
significant. See Cunningham, 55 USPQ2d at 1846, quoting In re National Data
Corp., 753 F.2d 1056, 224 USPQ at 752 (Fed. Cir. 1985) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”). Applicant
already has disclaimed SHIELD based on the Examining Attorney’s proof from the
skin care field that a “shield” protects the skin. As discussed more fully above in
connection with the disclaimer requirement as to PERFECTING, the evidence
reflects that this term describes a feature of the cosmetic goods. Nothing about the
use of these terms together imparts a meaning that differs from the combination of
individually descriptive terms. In contrast to these descriptive components of the
mark, INVISIBLUR is a fanciful term and therefore stronger in the trademark
sense. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684
(Fed. Cir. 2010). Thus, when encountering the mark, consumers would perceive
PERFECTING SHIELD as a reference to the function of the product, and focus
more on INVISIBLUR as the source-indicating portion of the mark. The mark in the
registration consists only of the term INVISIBLEND.
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We find that Applicant’s mark and the Registrant’s mark are similar in
appearance and sound, and they create a similar commercial impression. The mark
in the Registration and the dominant element of Applicant’s mark both start with
the INVISI- prefix, and contain one additional syllable that starts with BL-. Thus,
these common elements render INVISIBLUR and INVISIBLEND consonant in
appearance and sound. Moreover, the record includes definitions of the terms
embedded behind the prefix, and BLUR and BLEND both connote something
indistinguishable or indistinct.17 The similar meanings of these terms, coupled with
the identical prefix, establish parallel commercial impressions. Although Applicant
argues against this point by noting that “the word ‘blur’ is not used in any definition
of the word ‘blend’ and correspondingly the word ‘blend’ is not used in any definition
of the word ‘blur,”18 we disagree that the words must be exact synonyms in order to
create similar impressions.
Applicant contends that the Examining Attorney’s comparison of the marks
failed to take account of its mark as a whole, including the PERFECTING SHIELD
portion.19 However, we disagree and remain mindful that “[a]lthough the court may
place more weight on a dominant portion of a mark, for example if another feature
of the mark is descriptive or generic standing alone, the ultimate conclusion
nonetheless must rest on consideration of the marks in total.” Viterra, 101 USPQ2d

17 April 7, 2015 Office Action at 4-7 (The American Heritage Dictionary entries for “blend”
defined as “To combine or mix (different substances) so that the constituent parts are
indistinguishable from one another” and “blur” defined as “To make indistinct and hazy in
outline or appearance”).
18 4 TTABVUE at 5.
19 7 TTABVUE at 3-4.
Serial No. 86286112
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at 1908 (citations omitted). As indicated above, consumers are unlikely to rely on
the PERFECTING SHIELD wording to distinguish the source of Applicant’s goods,
and nothing about its addition to INVISIBLUR in the mark creates a distinct
meaning or impression. Considering these marks in their entireties, we find that
the great similarity between the mark in the cited Registration and the mark in the
Applicant’s Application weighs in favor of likely confusion, particularly in a case
such as this where the goods are the same. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393
F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004) (marks need not be as similar for
likely confusion when the goods are identical). Accordingly, this factor favors likely
confusion.
Thus, given the similarity of the marks, as well as the identical nature of the
goods and trade channels, we consider the mark set forth in the Application likely
to result in consumer confusion with the cited registered mark.
Decision: The refusal to register Applicant’s mark under Section 2(d) is
affirmed and the requirement that Applicant disclaim the term PERFECTING is
affirmed. Therefore, registration is refused.