Nikos GmbH

Trademark Trial and Appeal Board

Aug 4, 2004

No. 76382877 (T.T.A.B. Aug. 4, 2004)

Mailed:
August 4, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nikos GmbH
________
Serial No. 76382877
_______
Susan Upton Douglass of Fross Zelnick Lehrman & Zissu, P.C.
for Nikos GmbH.
Ira Goodsaid, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Bucher and Drost, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Nikos GmbH seeks registration on the Principal
Register of the mark shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76382877
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for goods identified in the application, as amended, as
follows:
perfume, cologne, eau de toilette, eau de
parfum, after-shave gel, after-shave
lotions, personal deodorants and anti-
perspirants, scented body lotion, bath and
shower gel, bath oil, bath beads, body
cream, body emulsions, non-medicated skin
care preparations, cosmetics, in
International Class 3.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
has held that applicant’s mark, when used in connection
with the identified goods, so resembles the mark shown
below:
1 Application Serial No. 76382877 was filed on March 15, 2002
claiming a right of priority pursuant to Section 44(d) based upon
a German registration for which application was made on February
19, 2002. The instant application is based both upon applicant’s
allegation of a bona fide intention to use the mark in commerce
(Section 1(b) of the Act) and on the foreign registration
(Section 44(e) of the Act). Three other classes of goods in
International Classes 14, 18 and 25, originally filed with this
application, were divided out and have now issued as Reg. No.
2827573.
Serial No. 76382877
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registered for goods identified as “cosmetics, namely
foundation, concealer, powder, lipstick, lip gloss, lip
pencil, eye shadow, eye liner, mascara, gels, serums,
perfume, cosmetic brushes, cleansers, toners, moisturizers,
make-up remover, night cream, eye cream, body cream,
glitter pencil, shampoo, conditioner, styling gel, blush,
hair spray, hair buffer and cologne,” also in International
Class 3,2 as to be likely to cause confusion, to cause
mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board.
We affirm the refusal to register.
In arguing for registrability, applicant contends that
an earlier registration owned by applicant3 co-existed with
the cited registration; that the marks create totally
different commercial impressions; that the Trademark
Examining Attorney has improperly dissected the marks; and
2 Registration No. 2549317 issued on March 19, 2002.
3 Registration No. 2036305 issued on
February 11, 1997, but was then cancelled
under Section 8, on November 15, 2003.
However, this registration included no
cosmetics in International Class 3 –
containing goods in International Classes
18 and 25 only.
Serial No. 76382877
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that the image of the winged lion contained within
applicant’s elaborate design is the signature element of
applicant’s mark. Applicant agrees that the goods are
identical or otherwise closely related and that the
respective goods would be presumed to travel through the
same channels of trade to the same classes of consumers.
On the other hand, applicant does argue that consumers “in
the world of designer and licensed marks” would readily
distinguish between these two marks.
By contrast, the Trademark Examining Attorney argues
that while the involved marks have been considered in their
entireties, the literal portions of the marks dominate each
mark, creating similar overall commercial impressions. The
Trademark Examining Attorney points out that applicant has
shown neither the fame of its marks nor the sophistication
of its consumers, and that a claim of ownership of a
cancelled registration that included goods in International
Classes 18 and 25 is totally irrelevant to the outcome in
this proceeding.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
Serial No. 76382877
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1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the relatedness of the goods as
listed in the cited registration and in the instant
application. As noted, applicant has correctly conceded
that its goods are identical or closely related to those of
registrant, and would be presumed to travel through the
same channels of trade to the same classes of consumers.
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation. As our
principal reviewing court, the Court of Appeals for the
Federal Circuit, has pointed out, “[w]hen marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). While we compare the marks in their
entireties, the Court of Appeals for the Federal Circuit
has also held that in articulating reasons for reaching a
Serial No. 76382877
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conclusion on the question of likelihood of confusion,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature or portion of a mark. That is, one feature of a
mark may have more significance than another. See Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560,
4 USPQ2d 1793, 1798 (Fed. Cir. 1987), and In re National
Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1985).
Here, the only word in registrant’s mark is the word
NIKO, and we find NIKO to be the dominant feature of
registrant’s mark. Clearly, purchasers would generally
call for registrant’s goods by utilizing the word, NIKO,
rather than trying to describe the oval design feature –
described by applicant as reminiscent of “a sign or
plaque.” While applicant’s mark does, of course, include
the prominent image of a winged lion, the presence of this
image does not change the reality that purchasers would
generally call for applicant’s goods by utilizing the word,
NIKOS. The winged-lion design feature, being a non-literal
element, is not something that potential or actual consumers
can easily verbalize. While applicant analogizes NIKOS’
winged-lion image to the NIKE swish or the RALPH LAUREN
Serial No. 76382877
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polo player, there is no support in the record for the
proposition that applicant’s winged-lion image has attained
such renown in the United States in connection with the sale
of cosmetics products that the image alone would create
strong source identification with applicant absent the word
mark. Accordingly, despite applicant’s arguments to the
contrary, we find that the word NIKOS is the dominant
portion of the composite mark involved herein.
As to appearance, as argued by applicant, both marks
are displayed in different stylized formats:
Registrant’s mark
Applicant’s mark
Applicant emphasizes that its mark contains a “… Winged
Lion design against a black background with a surrounding
rim.” When placed side-by-side, as shown above, there are
obvious visual differences.
However, the test to be applied in determining
likelihood of confusion is not whether the marks are
distinguishable upon side-by-side comparison, but rather
whether the marks, as they are used in connection with the
Serial No. 76382877
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registrant’s and applicant’s goods, so resemble one another
as to be likely to cause confusion. Under actual marketing
conditions, consumers do not necessarily have the
opportunity to make side-by-side comparisons between marks.
Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980). The proper
emphasis is thus on the recollection of the average
customer, and the correct legal test requires us to
consider the fallibility of human memory. The average
purchaser normally retains a general rather than a specific
impression of trademarks. See Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735 (TTAB 1991), affirmed in unpublished opinion,
Appeal No. 92-1086 (Fed. Cir. June 5, 1992); Envirotech
Corp. v. Solaron Corp., 211 USPQ 724 (TTAB 1981); and
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Here, the literal elements in both marks are formed in
all upper case letters of a similar font style.
Applicant’s NIKOS is contained within a circle carrier
while registrant’s NIKO is contained within an oval carrier
device. As noted, registrant’s mark has no other
Serial No. 76382877
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significant design features, while applicant’s mark
prominently includes at its center a winged lion.
Nonetheless, we find that the differences between these two
marks are not sufficient to distinguish them. As argued by
the Trademark Examining Attorney, given the composition of
these two marks, applicant’s mark is much closer in overall
appearance to registrant’s mark than applicant would have
us conclude.
As to connotation, applicant offered in its
application papers that “the mark NIKOS comprises a common
first name.” The cited registration does not provide any
information about the origins of the very similar word
NIKO, although it appears as if both NIKO and NIKOS might
be seen as nicknames for Nicholas. In any case, consumers
who are already acquainted with registrant’s NIKO mark on
cosmetics and notice the terminal letter “S” might well
view NIKOS as a pluralized or even possessive (without the
presence of an apostrophe) variation on the word NIKO.
As to pronunciation, when spoken, NIKO and NIKOS are
almost indistinguishable. The Trademark Examining Attorney
points out that given the frequency with which perfume is
given as a gift, the putative buyer who asks the intended
recipient to name her favorite perfume may hear either
Serial No. 76382877
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“NIKO” or “NIKOS,” and may well purchase the first of these
products encountered.
Hence, after comparing these two marks in their
entireties as to sound, meaning and appearance, we conclude
that they create similar overall commercial impressions.
Applicant argues that the United States Patent and
Trademark Office had earlier made a decision to permit the
cited registration and its NIKOS APOSTOLOPOULOS and design
mark to coexist on the Register:
The Applicant is the owner of U.S.
Registration No. 2,036,305 for a design mark
that is essentially identical to the mark at
issue, except for the name APOSTOLOPOULOS,
appearing in smaller print below the Winged
Lion design, registered in Classes 18 and
25….
Notwithstanding the fact that the
Applicant’s mark containing the term NIKO[S]
was already registered when the cited
registrant’s mark was being examined, the
PTO determined that the marks could coexist.
Undoubtedly, the PTO considered that the
previously registered mark contained a
number of elements, only one of which was
the word NIKOS; as such, the mark NIKO would
be able to coexist. Since the NIKO mark is
already coexisting with the Applicant’s
registered mark NIKOS APOSTOLOPOULOS with
the identical design for related goods, it
is apparent that the PTO and the public, not
to mention the owner of the cited
registration, do not consider the marks to
be confusingly similar. Because the marks
are already coexisting, there is little
prejudice to the cited registrant to allow
Serial No. 76382877
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this similar mark for related goods to be
registered as well.
Applicant’s appeal brief of January 7, 2004, pp. 10, 11.
However, as noted by the Trademark Examining Attorney,
“that registration was cancelled on November 15, 2003 for
failure to file an affidavit of continuing use under
Section 8 of the Trademark Act.” A cancelled trademark
registration represents no continuing ownership rights for
applicant.
In any case, the literal element of applicant’s
earlier mark was NIKOS APOSTOLOPOULOS. Moreover, it is
noteworthy that this now cancelled registration was for
goods in International Classes 18 and 25 only. In fact, as
applicant is aware, the USPTO has actually acted in a
manner consistent with that earlier determination during
the prosecution of the instant application. As noted
above, the involved application originally included, inter
alia, goods in International Classes 18 and 25. The Office
agreed with applicant to divide those goods out into a
“child” application (Application Serial No. 76975972), and
the involved mark with three classes of goods has now
issued as Reg. No. 2827573.
Applicant and the Trademark Examining Attorney have
debated the applicability of In re Produits de Beaute, 225
Serial No. 76382877
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USPQ 283 (TTAB 1984) – an earlier Board decision having
some parallels to the instant case. In that case, the
cited registration was for the mark JUVENANCE for “cosmetic
skin creams, lotion and cleansers.” The application was
for the following design mark, for “night cream”:
In reversing the refusal to register, the Board found
that the Trademark Examining Attorney had dissected the
mark in that she concluded there was a likelihood of
confusion based upon the similarity between the words
“Jouvence” and “Juvenance.” The Board noted that when
considering the marks in their entireties, the comparison
needed to be made between the single word JUVENANCE and a
“visually complicated” mark having “a stylized bird design,
color, the signature of ‘JEAN d’ AVEZE,’ the word ‘PARIS,’
and the black background for all of the wording.” 225 USPQ
at 284. However, as noted in our detailed comparisons of
the marks, supra, we do not find as sharp a contrast
between the marks involved herein as was present in
Serial No. 76382877
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Produits de Beaute. Additionally, in that decision, the
Board seemed to accept applicant’s argument that as applied
to beauty products, the JOUVENENCE / JUVENANCE elements may
“have a similar suggestiveness – that of youthfulness or
rejuvenation,” Id., which would have limited the scope of
protection to be accorded the cited registration. Such is
not the case here with totally arbitrary terms like NIKO /
NIKOS. Moreover, when weighing all the du Pont factors in
the Produits de Beaute case, the Board accorded strong
significance to the du Pont factor focusing on the
interface between applicant and the owner of a prior mark.
Specifically, the owner of the cited registration and
applicant had entered into a stipulation to dismiss an
earlier inter partes case.4 The Board concluded that this
agreement reflected the belief of registrant that there was
no likelihood of confusion between their respective marks.
225 USPQ at 284-85. Our reviewing court has repeatedly
encouraged the Board to accord significant weight to an
agreement between actual merchants in the marketplace as
they are in the best position to know the real life
situation. See Bongrain International (American)
4 This was an opposition proceeding involving registrant’s
JUVENANCE mark and applicant’s mark.
Serial No. 76382877
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Corporation v. Delice de France Inc., 811 F.2d 1479, 1
USPQ2d 1775, 1778 (Fed. Cir. 1987). This too represents a
critical du Pont factor in favor of registration that is
clearly missing in the instant case. Finally, we should
note that the Board in Produits de Beaute expressly
disagreed with the position taken by applicant herein that
purchasers of cosmetics are “sophisticated and careful.”
Accordingly, the Produits de Beaute case can be
distinguished from the instant case, and we conclude that
it does not support a reversal of the Trademark Examining
Attorney herein.
In conclusion, given that the goods are identical and
otherwise closely related, that the respective goods must
be presumed to travel through the same channels of trade to
the same classes of consumers, and that the marks create a
similar overall commercial impression, we find a likelihood
of confusion herein.
Decision: The refusal to register based upon Section
2(d) of the Trademark Act is hereby affirmed.