Nuvita Market, L.L.P.

Trademark Trial and Appeal Board

Apr 4, 2005

No. 76382474 (T.T.A.B. Apr. 4, 2005)

Mailed: April 4, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nuvita Market, L.L.P.
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Serial No. 76382474
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Charles H. Knull of Ullman, Shapiro & Ullman, LLP for
Nuvita Market, L.L.P.

Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______

Before Seeherman, Chapman and Drost, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

On March 14, 2002, Nuvita Market, L.L.P. (an Arizona
limited liability partnership) filed an application to
register on the Principal Register the mark DESIGNER SKIN
DRAMA QUEEN for “sunblock, non-medicated after[-]sun skin
balm, bronzers, suntanning preparations, sun screen, suntan
oil and lotion, after-sun skin lotion, self-tanning lotion,
and tanning accelerators” in International Class 3. The
application is based on applicant’s assertion of a bona
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76382474
2
fide intention to use the mark in commerce. Applicant
disclaimed the word “skin.”
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to its
identified goods, so resembles the registered mark DRAMA
QUEEN for “lotions, creams and moisturizers for face and
body, cologne, perfume, face and body scrub and cleanser,
body sponge scrubber with container for liquid soap, soap”
in International Class 3,1 as to be likely to cause
confusion, mistake or deception.2
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion

1 Registration No. 2274988, issued August 31, 1998 to Cosmar
Corporation, Section 8 affidavit accepted, Section 15 affidavit
acknowledged.
2 The Examining Attorney originally cited two registrations under
Section 2(d) of the Trademark Act, and referenced five pending
applications. The second cited registration (Reg. No. 2415111)
as well as the five referenced pending applications all consist
of or include the words DESIGNER SKIN, and all are owned by
Designer Skin LLC. Applicant successfully argued to the
Examining Attorney that there is unity of control and a single
source of the goods offered by applicant and Designer Skin LLC;
and the Examining Attorney withdrew his refusal to register based
on the second cited registration and he withdrew the references
to the five pending applications. See TMEP §1201.07(b)(iii) (3d
ed. 2002).
Ser. No. 76382474
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issue. See 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 USPQ2d 1531
(Fed. Cir. 1997).
Turning first to a consideration of the goods involved
in this case, we start with the well-settled principle that
the question of likelihood of confusion in Board
proceedings must be determined based on an analysis of the
goods or services identified in applicant’s application
vis-a-vis the goods or services recited in the cited
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Further, it is
also well settled that goods or services need not be
identical or even competitive to support a finding of
likelihood of confusion. Rather, it is enough that the
goods or services are related in some manner or that the
Ser. No. 76382474
4
circumstances surrounding their marketing are such that
they would likely be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they emanate from
or are in some way associated with the same producer or
that there is an association between the producers of each
party’s goods or services. See In re Peebles Inc., 23
USPQ2d 1795, 1796 (TTAB 1992); and In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991).
It is not necessary that a likelihood of confusion be
found as to each item in the application vis-a-vis the
goods or services in the cited registration. See Squirtco
v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983); Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986 (CCPA 1981); and Alabama Board
of Trustees v. BAMA-Werke Curt Baumann, 231 USPQ 408, n. 7
(TTAB 1986).
In this case, applicant’s identification of goods
includes the item “after-sun skin lotion” and registrant’s
identification of goods includes the items “lotions, creams
and moisturizers for face and body.” The goods must be
considered legally identical in that applicant’s “after-sun
skin lotion” is encompassed within the broader language
“lotions” in the cited registration. Moreover, the
Ser. No. 76382474
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Examining Attorney correctly argues that applicant’s
identified sun tan preparations and registrant’s identified
skin care preparations are closely related. See Royal
Hawaiian Perfumes v. Diamond Head Products of Hawaii, 204
USPQ 144, 147 (TTAB 1979). See also, Hewlett-Packard
Company v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002)(“even if the goods and services
in question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
The Examining Attorney submitted into the record
printouts of several third-party registrations, all based
on use in commerce, to show that both types of products are
offered under a single mark. (See e.g., Registration No.
2760429 for, inter alia, “lotion for the face” and “suntan
lotion for the face”; Registration No. 2805692 for, inter
alia, “face and skin moisturizers and conditioners” and
“sunscreens, suntanning lotions”; Registration No. 2660913
for, inter alia, “skin care preparations, namely, face
creams, gels and lotions; … skin moisturizing creams, gels
and lotions” and “sun screen, sunblock”; Registration No.
2768083 for, inter alia, “body lotions” and “cosmetics,
namely, sun tanning preparations; … suntan lotions; and
after-sun lotions”; and Registration No. 2730746 for, inter
Ser. No. 76382474
6
alia, “facial creams, … body creams and lotions” and “sun
block, sunscreen, sun creams, suntan lotion, … after-sun
lotions.”)
When considering the third-party registrations
submitted by the Examining Attorney, we are aware that such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them. Such
third-party registrations nevertheless have some probative
value to the extent they may serve to suggest that such
goods are of a type which emanate from the same source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785
(TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1467, footnote 6 (TTAB 1988).
We also do not find any differences in the channels of
trade or classes of purchasers for the respective goods.
We must presume, given the identifications (neither of
which is limited), that the goods travel in the same
channels of trade (e.g., drug stores), and that they are
purchased by the same classes of purchasers, which in this
case is the public at large. See Canadian Imperial Bank v.
Wells Fargo Bank, supra.
Turning then to a consideration of the marks, we view
them in terms of their sound, appearance, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Ser. No. 76382474
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Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005).
Applicant argues that the leading and dominant portion
of its mark is DESIGNER SKIN, with DRAMA QUEEN being a
“subordinate part” of its mark; that DESIGNER SKIN is
applicant’s (and its sister company’s) “house mark,” and
therefore it negates the likelihood of confusion; and that
the commercial impressions of the marks DESIGNER SKIN DRAMA
QUEEN and DRAMA QUEEN are different.
The Examining Attorney argues that the mere addition
of a term to an already registered mark does not overcome
or obviate the likelihood of confusion; that the shared
element in the marks -- DRAMA QUEEN -- is arbitrary with
respect to the involved goods as there is no evidence that
the phrase is commonly used in the cosmetic or toiletry
industries; and that the addition of the “house” mark is
likely to add to consumers’ confusion.
We must consider the marks in their entireties. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). And the addition of a trade name or
house mark to a registered mark does not generally avoid
confusion. See Menendez v. Holt, 128 U.S. 514 (1888).
There are exceptions to that general rule, including (i)
when there are recognizable differences between the shared
Ser. No. 76382474
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elements such that the addition of a trade name or house
mark may be sufficient to render the marks as a whole
distinguishable and avoid confusion and (ii) when the
shared elements are descriptive or highly suggestive or
play upon commonly used or registered words. See In re Bed
& Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir.
1986); Rockwood Chocolate Co. v. Hoffman Candy Co., 372
F.2d 552, 152 USPQ 599 (CCPA 1967); In re Apparel Ventures,
Inc., 229 USPQ 225 (TTAB 1986); In re Dennison
Manufacturing Co., 229 USPQ 141 (TTAB 1986); In re Riddle,
225 USPQ 630 (TTAB 1985); In re S.D. Fabrics, Inc., 223
USPQ 54 (TTAB 1984); and In re C.F. Hathaway Company, 190
USPQ 343 (TTAB 1976).
The exceptions are not applicable here. As argued by
the Examining Attorney, there is no evidence that the
registered mark DRAMA QUEEN is anything other than
arbitrary for the involved goods. Moreover, the common
element (the words DRAMA QUEEN) in applicant’s mark and the
registered mark are identical. When the house mark
DESIGNER SKIN is added to the registered mark for identical
and closely related goods, there is a likelihood of
confusion. See Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419 (CCPA 1977); and Coca-Cola
Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188
Ser. No. 76382474
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USPQ 105 (CCPA 1975). Consumers familiar with registrant’s
mark DRAMA QUEEN, upon seeing DESIGNER SKIN DRAMA QUEEN,
are likely to believe that the registrant has simply added
a house mark to its product mark. That is, “where the
marks are otherwise virtually the same, the addition of a
house mark … is more likely to add to the likelihood of
confusion than to aid to distinguish the marks.” Key West
Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ
168, 170 (TTAB 1982).
We find the marks, considered in their entireties, to
be similar in sound, appearance, connotation and overall
commercial impression.
In view of the similarities of the marks, the goods
being in part identical and in part closely related, and
the goods being sold through the same channels of trade to
ordinary consumers, we find that applicant’s mark is likely
to cause confusion with the mark in the cited registration.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.