Normajean Fusco

Trademark Trial and Appeal Board

Dec 12, 2000

No. 75368502 (T.T.A.B. Dec. 12, 2000)

12/12/00
Paper No. 12
EWH/krd
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Normajean Fusco
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Serial No. 75/368,502
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Gail E. Nickols of Graham, Campaign, P.C. for Normajean
Fusco.
Rodney Dickinson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
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Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Normajean Fusco (applicant) seeks to register MAGNAMUD
in typed drawing form for “massaging oils, muds and
lotions, and non-medicated bath salts.” The application
was filed on October 6, 1997 with a claimed first use date
of October 1, 1997.
The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the basis
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/368,502
2
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark MAGNA, previously
registered in typed drawing form for “suntan lotions, gels
and oils.” Registration No. 2,157,422.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarity of the marks and the
similarity of the goods. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Considering first the marks, we note that applicant
has adopted registrant’s mark MAGNA in its entirety and
added thereto the descriptive term MUD. Thus, we find that
the two marks are very similar. However, we should note
that the word “magna,” while originally a Latin word, has
entered the English language and is defined as meaning
“great.” The Random House English Dictionary (2d ed.
1987). Thus, registrant’s mark MAGNA is highly laudatory
and very suggestive. Accordingly, it is entitled to a
somewhat more limited scope of protection. 2 J. McCarthy,
Serial No. 75/368,502
3
McCarthy on Trademarks and Unfair Competition Section 11:17
at pages 11-23 (4th ed. 2000).
Turning to a consideration of the goods, registrant’s
goods are suntan products and applicant’s goods are
massaging products and non-medicated bath salts. The
examining attorney has never contended, much less proven,
that suntan products and massaging products and non-
medicated bath salts are marketed under the same
trademarks. Rather, the examining attorney has merely
argued and established that both types of products “move in
the same channels of trade.” (Examining attorney’s brief
page 7). In particular, the examining attorney has made of
record printouts from nine websites of companies which
offer a variety of products including suntan products and
massaging products. However, these websites do not
establish that both types of products are marketed under
the same trademarks. Indeed, the examining attorney’s own
website evidence demonstrates that on many occasions, these
two types of products are marketed under different
trademarks.
Today, on-line marketers offer such a wide array of
products that they are comparable to large “brick and
mortar” stores. It has been held in the past that the mere
fact that two types of products can be found in large
Serial No. 75/368,502
4
stores is simply not sufficient to establish that the
products are related. Federated Foods, 192 USPQ at 29. We
believe that the same reasoning applies with regard to the
on-line marketing of today. In other words, absent a
showing that suntan products and massaging products and
non-medicated bath salts are marketed under the same
trademarks, the mere fact that both types of products are
marketed on some of the same websites is simply
insufficient, by itself, to establish that the products are
related to any extent other than that both types of
products can be applied to the body.
In sum, given the fact that there is only a minimal
relationship between registrant’s and applicant’s goods;
the fact that registrant’s mark MAGNA is very highly
suggestive and laudatory; and the fact that the marks are
not identical, we find that there exists no likelihood of
confusion.
Serial No. 75/368,502
5
Decision: The refusal to register is reversed.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board