Nixon

Trademark Trial and Appeal Board

Oct 19, 2004

No. 76388939 (T.T.A.B. Oct. 19, 2004)

Mailed:
October 19, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Nixon
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Serial No. 76388939
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Cory M. Baker, Afschineh Latifi and Robert L. Tucker of
Tucker & Latifi, LLP for Tracy Nixon.
Shaunia P. Wallace Carlyle, Trademark Examining Attorney,
Law Office 110 (Chris A. F. Pedersen, Managing Attorney)
_______
Before Quinn, Bucher and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Tracy Nixon, a citizen of the United States, has
applied to register the mark PASSPORT TRAVEL SPA on the
Principal Register for services identified as "operating
beauty salons and rendering spa services," in Class 44.
The application is based on applicant's stated bona fide
intention to use the mark in commerce for the identified
services, and includes a disclaimer of exclusive rights in
the term "SPA."
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76388939
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The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), in
view of the existence of Registration No. 2232086, issued
March 16, 1999, for the mark PASSPORT and design (shown
below) for "therapeutic massage services," in Class 42.
When the refusal of registration was made final,
applicant appealed and requested reconsideration. The
examining attorney denied the request for reconsideration.
Applicant and the examining attorney have filed briefs for
the appeal, but applicant did not request an oral hearing.
The examining attorney has argued that the term
PASSPORT is the dominant element in both the mark in the
cited registration and in applicant's mark. As for the
mark in the cited registration, the examining attorney
argues that words tend to dominate over designs, because
they can be used to call for the goods or services. The
examining attorney also notes that the test is not whether
Ser No. 76388939
3
applicant's PASSPORT TRAVEL SPA mark and the registrant's
PASSPORT and design mark could be distinguished if compared
side-by-side, but whether consumers, who may retain only
general impressions of marks they have seen, will be
confused regarding the source or sponsorship of applicant's
services. Specifically, the examining attorney contends
that consumers could easily conclude that the PASSPORT
TRAVEL SPA services are a new or approved offering from the
source of PASSPORT therapeutic massage services.
In support of the contention that registrant's
therapeutic massage services and applicant's beauty salon
and spa services are related, the examining attorney has
put into the record a number of third-party registrations
showing the same mark used for beauty salon and/or spa
services featuring massage services. For example, the mark
AVANT GARDE (stylized) is registered for "beauty salons
specializing in hair, massages, facials, manicures and
pedicures; portrait photography"; the mark BLUE DOOR is
registered for "…spa services providing body and skin
treatments, namely massages, applications of lotions and
compositions including skin lighteners, skin masks,
antioxidant treatments, skin peels and salt scrubs"; the
mark SPAHHS SKINCARE & BODYWORX is registered for "health
spa services featuring massages, facials, manicures,
Ser No. 76388939
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pedicures, and cosmetic consulting"; a stylized upper case
letter R is registered to Robert's Hair Designer, Inc. for
"beauty salon and spa services, namely, providing massages,
facials, manicures, pedicures, hair care and nail care";
the mark MILAGRO is registered for "beauty salon and spa
services, namely, providing massages, facials, manicures,
pedicures, hair care and nail care"; and the mark DISCOVER
THE BEAUTY is registered for "beauty salon and spa services
featuring hair care, nail care, skin care, and massages."
Applicant has not argued that the services are
unrelated, and we therefore view this point as having been
conceded.1 On the other hand, applicant has argued that the
involved marks are dissimilar in sight, sound and meaning,
that there are third-party registrations for various marks
including the term PASSPORT that suggest that such marks
can co-exist, and that consumers of the involved services
are sophisticated. Brief, p. 2.
As to the third point, i.e., the asserted
sophistication of the consumers for the involved services,
1 Moreover, we view relatedness to have been established by the
third-party registrations made of record by the examining
attorney. Third-party registrations which individually cover a
number of different items and which are based on use in commerce
(as are all but one of the registrations introduced by the
examining attorney) serve to suggest that the listed goods and/or
services are of a type that may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Ser No. 76388939
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applicant has not presented any evidence or even arguments,
only her conclusion. Thus, we do not find this very
persuasive that the asserted sophistication of consumers
will help avoid a likelihood of confusion.
As to the comparison of the involved marks, applicant
notes that the marks look different because her mark
includes two words not in registrant's mark and
registrant's mark includes a design element; and that the
marks sound different and have different meanings because
of the two additional words in applicant's mark.
As to the existence of other registrations or
applications for marks including the term PASSPORT,
applicant essentially advances three arguments. First,
applicant argues that PASSPORT has been registered for
fragrances and concludes that if PASSPORT can be registered
for fragrances notwithstanding a registration for PASSPORT
for therapeutic massage (the cited registration), then
PASSPORT TRAVEL SPA can be registered for applicant's
services. Second, applicant argues that she has obtained
approval of her application for PASSPORT NAILS and design
without having the cited registration cited against that
application. Third, applicant notes that registrations for
PASSPORT HEALTH, PASSPORT TO HEALTH, and PASSPORT TO
WELLNESS coexist for various health-related services.
Ser No. 76388939
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We analyze the issue of likelihood of confusion using
the factors that were articulated in the case of In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
“The likelihood of confusion analysis considers all
DuPont factors for which there is evidence of record but
‘may focus ... on dispositive factors.’” Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1003 (Fed. Cir. 2002) (citations omitted).
In many cases, two key, although not exclusive,
considerations are the similarities or differences between
the marks and the similarities or differences of the goods
and services. See, e.g., Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks”).
The similarity or dissimilarity of the marks is
assessed by comparing the marks as to appearance, sound,
connotation and commercial impression. Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002). It is well-settled
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that marks, when compared, must be considered in their
entireties and not simply to determine what points they
have in common or in which they may differ. Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983). Nonetheless, “there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Finally, it is not a necessary prerequisite
for a finding of likelihood of confusion that marks be
found similar in all respects, i.e., in sight, sound and
meaning, and a likelihood of confusion may be found
principally on similarity in one or two of these. See,
e.g., In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113
(Fed. Cir. 1983) ("The [USPTO] may reject an application ex
parte solely because of similarity in meaning of the mark
sought to be registered with a previously registered
mark").
Considering the marks, we note that applicant seeks to
register her PASSPORT TRAVEL SPA mark in typed form. When
a mark is registered in typed form, the registration of the
mark is not limited to any particular font and we must
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consider all reasonable forms of display in which the mark
may be presented when used. Phillips Petroleum Co. v. C.
J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971). We
find that the font used in registrant's presentation of its
PASSPORT and design mark would be a reasonable form of
display for the proposed PASSPORT TRAVEL SPA mark.
Accordingly, in our analysis of likelihood of confusion, we
consider that the words in the marks may look very similar.
Moreover, we note the reprint of a web page of applicant's,
put into the record by the examining attorney, which shows
that the term PASSPORT is set against a background square
of one color, while the words TRAVEL SPA are set against an
adjacent background square of a different color. Thus, in
applicant's actual means of presentation of the applied-for
mark, she has presented the mark in a way that highlights
the term PASSPORT.2
2 In addition to the separation of the words TRAVEL SPA, the web
page description of applicant's services states: "Our daily
lives are filled with stressful situations that can take their
toll on our bodies. For many, traveling only adds to the
problem. Passport Travel Spa provides the relief you seek, with
professional licensed massage therapists on-hand to literally rub
your worries away." Given the visual separation of the words
PASSPORT and TRAVEL SPA, and the language used by applicant to
promote the massage services offered through her spa, prospective
consumers are more likely to focus on PASSPORT as the source-
indicating term in her mark and to consider TRAVEL SPA as
suggestive or descriptive of spa or massage services of a
particular type.
Ser No. 76388939
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In terms of the connotation of the involved marks, we
find them very similar. Specifically, both marks convey
the connotation of travel. While the asserted "Yin and
Yang" symbol in the registered mark may also suggest, for
those familiar with the symbol, that registrant's massage
services may be similar to Chinese forms of massage, this
is a separate connotation from that of travel imparted by
the word PASSPORT, i.e., the symbol does not alter the
connotation of the word PASSPORT.
There is nothing in the record to suggest that
PASSPORT is anything but an arbitrary term when used on or
in connection with the involved services. Accordingly, we
consider it a strong in terms of distinctiveness. Because
of the dominance of PASSPORT in both marks and the similar
connotations of travel imparted by each mark, we find the
marks similar for likelihood of confusion purposes.
Given the relatedness of the services and the
similarity of the marks, we find that confusion among
prospective consumers of applicant's and registrant's
services is likely. We are not persuaded otherwise by
applicant's argument that prospective consumers of these
services would be discriminating. When the involved marks
are used in conjunction with the respective massage and spa
Ser No. 76388939
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services,3 even careful or discriminating consumers may be
confused. Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Finally, we are not persuaded by applicant's arguments
regarding third-party registrations or applications (or
applicant's own receipt of a registration for PASSPORT
NAILS and design), that the scope of protection that should
be accorded registrant's PASSPORT and design mark should be
so limited that applicant's mark should be approved for
publication. As outlined earlier, applicant has advanced
three theories for this argument. We consider each in
turn, below.
Applicant's first argument for restricting the scope
of protection that should be accorded the cited
registration is based on applicant's contentions that there
exists a registration for PASSPORT for fragrances and that
there are "numerous renowned cosmetic lines, such as ESTEE
LAUDER and ELIZABETH ARDEN, which also operate beauty
salons or spas under the same trademark as used for their
cosmetic line." Request for reconsideration, p. 3. By its
own terms, the second contention supporting this argument
is only that the same marks are used for cosmetics and
3 The record establishes that applicant's spa services include
the offering of massage services.
Ser No. 76388939
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beauty salons or spas, not that the same marks are used for
fragrances and salons or spas offering massage services.
For this reason alone, applicant's argument is infirm.
More importantly, when considering the ESTEE LAUDER and
ELIZABETH ARDEN registrations on which applicant relies, we
see that they do not, in fact, support applicant's
position. First, none of the ESTEE LAUDER registrations
submitted by applicant covers spa services or massage
services. Second, the registrations show the same
ELIZABETH ARDEN mark registered for massage services and
what may be characterized as spa services, on the one hand,
and for eyeglass frames on the other, but show a different
mark used for cosmetics and fragrances.
Applicant's second argument for restricting the scope
of protection that should be accorded the cited
registration is based on applicant's contention that she
has obtained a registration for PASSPORT NAILS and design
for services identified as operating cosmetics and beauty
salons. We note, however, that applicant's registration
for the PASSPORT NAILS and design mark is just that, a
registration that includes a design entirely different from
the design in the PASSPORT and design mark registration
cited against the application involved in this appeal. In
short, the likelihood of confusion analysis brought to bear
Ser No. 76388939
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on applicant's other application cannot be compared to the
likelihood of confusion analysis required by this appeal.
Applicant's third argument for restricting the scope
of protection that should be accorded the cited
registration is based on applicant's contention that the
following marks coexist on the register: PASSPORT HEALTH
for health care services for travelers (Registration No.
2058410), PASSPORT TO HEALTH for educational programs on
physical and mental health issues (Registration No.
1805566), and PASSPORT TO WELLNESS for a preventive health
care program (application Serial No. 76347115). In fact,
the application to register PASSPORT TO WELLNESS is now
abandoned. As to the two registrations that co-exist, we
note that one is for health care services and the other for
educational services relating to health-care issues. There
is nothing in the record to establish whether these
services are routinely provided under the same mark. Even
if there were such information in the record, we would find
the co-existence of these registrations of little probative
value in deciding the question before us on this appeal.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001).
In short, each of the arguments advanced by applicant
as to why we should accord the cited registration a limited
Ser No. 76388939
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scope of protection have little merit or probative value.
They do not alter our conclusion that confusion is likely
because of the similarity of the involved marks and the
relatedness of the services.
Decision: The refusal of registration under Section
2(d) is affirmed.