On-Beauty Limited

Trademark Trial and Appeal Board

Aug 5, 2008

No. 78779336 (T.T.A.B. Aug. 5, 2008)

Decision Mailed:
August 5, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re On-Beauty Limited
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Serial No. 78779336
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Thomas F. Dunn of Morse, Barnes, Brown & Pendleton, P.C. for On-
Beauty Limited.

James W. Ringle, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Hohein and Walters, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

On-Beauty Limited has filed an application to register
on the Principal Register in standard character form the mark
"PROTO-COL" for "cosmetics; cosmetic soaps; soaps for body care;
perfumes, essential oils; hair lotions; toothpaste; skin
moisturizer; facial beauty masks; body scrubs; non-medicated skin
care preparations; non-medicated lip balms; beauty creams; body
creams; cosmetic creams; facial creams; non-medicated skin
creams; bath powder; body powder; bath gels; beauty gels; hair
gels; shaving gels; non-medicated stimulating lotions for the
skin; bathing lotions; beauty lotions; body lotions; non-
medicated skin serums; massage oils; collagen based cosmetics;
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78779336
2
dentifrices; mouthwashes; tooth whitening preparations; tooth
cleaning preparations; denture cleaners; hair conditioners, hair
care creams, hair care lotions, hair care preparations, nail care
preparations, nail cream, nail enamels, nail polish, nail polish
remover, nail strengtheners, hair emollients, [and] skin
emollients" in International Class 3.1
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 goods, so resembles the
mark "PATIENT PROTOCOL," which is registered on the Principal
Register in standard character form for "skin and body care
products, namely, cleansers, cleansing cremes, toners,
exfoliation cremes, gels, skin lotions, liposomes extracts and
creams for application to the skin, eye cremes, hand and body
cremes and lotions, leg cremes and lotions and sun screens,
creams for cellulite reduction and firming cremes" in
International Class 3,2 as to be likely to cause confusion, or to
cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood

1 Ser. No. 78779336, filed on December 22, 2005, which is based on an
allegation of a bona fide intention to use the mark in commerce.

2 Reg. No. 2,921,884, issued on February 1, 2005, which sets forth a
date of first use anywhere and in commerce of October 1998. The word
"PATIENT" is disclaimed.

Ser. No. 78779336
3
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity of the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, inasmuch as
the respective goods are identical in part (e.g., "body creams"
(or "body cremes") and "body lotions") or otherwise overlap or
are related (e.g., "non-medicated skin care preparations"
encompass "skin and body care products, namely, cleansers,
cleansing cremes, toners, ... gels, skin lotions, ... and creams
for application to the skin"),4 the primary focus of our inquiry

3 The court, in particular, pointed out that: "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."
192 USPQ at 29.

4 Applicant, in its brief, takes exception to the Examining Attorney's
"determination that confusion is likely because 'both [applicant's
goods and registrant's goods] would likely be sold at pharmacies or
cosmetics counters at department stores.'" Specifically, applicant
asserts that "[i]t is well-settled that the mere fact that two
products sold with the same or a similar mark are sold in the same
type of store, or even the same store, is an insufficient basis for
finding confusion likely," citing various inapposite cases involving
dissimilar goods. In a case such as this, however, likelihood of
confusion is determined on the basis of the goods as they are
identified in the application and the cited registration. See, e.g.,
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987) and Paula Payne Products
Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). Moreover, where, as here, the goods of an applicant and
a registrant are broadly described as to their nature and type, it is
presumed in each instance that in scope the application and cited
Ser. No. 78779336
4
is accordingly on the similarities and dissimilarities in the
marks at issue when considered in their entireties.
Turning thereto, we note as a preliminary matter that,
"[w]hen marks would appear on virtually identical goods ..., the
degree of similarity [of the marks] 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), cert. denied, 506 U.S. 1034 (1994). See
also ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980). Applicant,
in this case, nonetheless contends in its brief that "the mere
fact that PATIENT PROTOCOL and PROTOCOL [sic] share an element
does not compel a conclusion of likely confusion" because, when
considered in their entireties, "the marks are strikingly
different visually, aurally, and connotatively." Asserting, in
particular, that "registrant's mark contains the dominant leading
PATIENT component," applicant argues that:
Aurally, PATIENT PROTOCOL and PROTO-COL
are sufficiently dissimilar to preclude
confusion. The term PATIENT is wholly
missing from the applicant's mark. Likewise,
the alliterative "P" sounds in PATIENT
PROTOCOL provide for a distinctive aural
experience.

registration respectively include not only all goods of the nature and
type described therein, but that the identified goods are available
through all channels of trade which would be normal for those goods
and that they would be purchased by all potential buyers thereof.
See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, in
light of the identity in part and overlap of the respective goods and
the absence of any restrictions or limitations as to their channels of
trade and classes of purchasers, such goods must be presumed to travel
in the same channels of trade to the same customers. These factors
therefore favor a finding of a likelihood of confusion.

Ser. No. 78779336
5
Visually, the leading dominant PATIENT
component, coupled with the different
appearance of the PROTOCOL and PROTO-COL
components, render the applicant's mark
readily distinguishable from the
registrant's.

Finally, and perhaps most importantly,
the applicant's unique spelling of PROTO-COL
lends its mark a highly distinctive meaning.
The COL component is an abbreviation for
COLLAGEN, the main support material of skin,
in connection with which the applicant's
products are used. This wordplay renders the
applicant's mark highly distinctive."

Contending further that "the PATIENT PROTOCOL mark for use with a
'protocol' of aftercare products on a 'patient' is so weak as to
merit only the narrowest, and arguably no, scope of protection,"
applicant concludes that, "[t]aken together, the visual, aural
and connotative differences between the two marks ... render the
applicant's mark readily distinguishable from the registrant's
such that the applicant's use of its mark is not likely to cause
confusion in the market."5
While we agree with applicant that differences in the
respective marks are apparent upon a side-by-side comparison of
the marks, we concur with the Examining Attorney that confusion
is likely. Among other things, the Examining Attorney properly
observes in his brief that:

5 Although applicant also refers to "the highly descriptive nature of
the registrant's mark when contrasted with the highly distinctive
wordplay in the applicant's mark," such a contention, as the Examining
Attorney correctly points out in his brief, constitutes an improper
collateral attack on the validity of the cited registration which will
not be further considered. See, e.g., In re Dixie Restaurants, 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997), citing Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA
1970) and In re Calgon Corp. 435 F.2d 596, 168 USPQ 278, 280 (CCPA
1971).

Ser. No. 78779336
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[T]he test of likelihood of confusion is not
whether the marks [at issue] can be
distinguished when subjected to a side-by-
side comparison. The question is whether the
marks create the same overall commercial
impression. Recot[] Inc. v. M.C. Becton, 214
F.[3]d 1322, 54 USPQ2d 1894, 189[9] (Fed.
Cir. 2000); Visual Information Inst., Inc. v.
Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).
The focus is on the recollection of the
average purchaser who normally retains a
general rather than specific impression of
trademarks. Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB
1979); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

Moreover, the Examining Attorney also correctly notes that, while
the marks at issue must be considered in their entireties,
including consideration of any descriptive and/or generic matter
therein, our principal reviewing court has indicated that, in
articulating reasons for reaching a conclusion on the issue 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 of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"[t]hat a particular feature is descriptive or generic with
respect to the involved goods ... is one commonly accepted
rationale for giving less weight to a portion of a mark" and
that, "[i]ndeed, this type of analysis appears to be
unavoidable." 224 USPQ at 751. See also In re Dixie Restaurants
Inc., supra.
Here, we concur with the Examining Attorney that, in
view of the descriptiveness of the term "PATIENT" as evidenced by
Ser. No. 78779336
7
the disclaimer thereof in the cited registration for registrant's
"PATIENT PROTOCOL" mark, it is the word "PROTOCOL" which
constitutes the principal source distinguishing element of
registrant's mark. Such word is essentially identical to
applicant's "PROTO-COL" mark and, when used in connection with
the descriptive term "PATIENT" to form the mark "PATIENT
PROTOCOL," such mark is substantially similar overall in sound,
appearance and connotation to applicant's mark "PROTO-COL."
Although, perhaps, some customers for applicant's goods would
regard the element "COL" in applicant's mark as suggestive of the
term "collagen," especially as to those of its goods which are
for use on or in connection with the skin,6 we agree with the
Examining Attorney that other "consumers are unlikely to perceive
such reference." In consequence thereof, applicant's mark, as
contended by the Examining Attorney, would appear to such
consumers "to be nothing more than a slightly novel spelling of
the otherwise familiar term 'PROTOCOL.'"
Furthermore, nothing in this record demonstrates that
marks which consist of or include the term "PROTOCOL" or variants
thereof are so weak as to merit only the narrowest scope of
protection. There is no evidence, in particular, to support
applicant's assertion that registrant's "PATIENT PROTOCOL mark
for use with a 'protocol' of aftercare products on a 'patient' is
so weak as to merit only the narrowest, and arguably no, scope of

6 We note in this regard that the record contains no proof that the
term "col," as asserted by applicant, is commonly understood as an
abbreviation for the word "collagen."
Ser. No. 78779336
8
protection,"7 either in the sense of being highly suggestive of
the goods in connection with which the mark is used8 or there
being extensive use in the marketplace by third parties of other
marks containing the term "PROTOCOL" in connection with the same
or similar goods. While, at best, use of the word "PROTOCOL" in
applicant's and registrant's marks is arguably suggestive of, for
example, skin care preparations and products which are devised to
be used in a particular skin-care regimen, both marks convey

7 While applicant, with its request for reconsideration, submitted a
copy of excerpts from registrant's website along with a copy of the
specimen of use from registrant's registration to show, as recounted
in the Examining Attorney's brief, that "applicant's research ...
[reveals that] the use of the mark by registrant is limited to 'after
care' products that differ from those identified in the registration,
and that[,] as a result, the goods ... [at issue] are readily
distinguishable," the Examining Attorney accurately points out that:

Registrant has not limited its identification of goods
to a particular type of "after care" product distinguishable
from applicant's goods. The presumption under Trademark Act
Section 7(b), 15 U.S.C. §1057(b), is that registrant is the
owner of the mark and that use of the mark extends to all
goods ... identified in the registration. Further,
registrant has not limited its identification of goods as to
their location of sale. The presumption also implies that
registrant operates in all normal channels of trade and
reaches all classes of purchasers of the identified goods
.... RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ
960, 964-[6]5 (TTAB 1980). Thus, there is no limitation to
registrant's trade channels and applicant's goods could
reach the same purchasers in the same trade channels.

8 For instance, we judicially notice in this regard that The American
Heritage Dictionary of the English Language (4th ed. 2000) defines
"protocol" as a noun meaning: "1.a. The forms of ceremony and
etiquette observed by diplomats and heads of state. b. A code of
correct conduct: safety protocols; academic protocol. 2. The first
copy of a treaty or other such document before its ratification. 3.
A preliminary draft or record of a transaction. 4. The plan for a
course of medical treatment or for a scientific experiment. 5.
Computer Science A standard procedure for regulating data transmission
between computers." It is well settled that the Board may properly
take judicial notice of dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v.
American Can Co., 212 USPQ 852, 860 n.7 (TTAB 1981).
Ser. No. 78779336
9
substantially the same overall commercial impression when used in
connection with the goods at issue. Neither the descriptive word
"PATIENT" in registrant's "PATIENT PROTOCOL" mark nor the
hyphenated spelling of applicant's "PROTO-COL" mark are
considered sufficient to distinguish such marks so as to preclude
a likelihood of confusion, particularly when used in connection
with identical and otherwise related goods.
Accordingly, we conclude that purchasers who are
familiar or otherwise acquainted with registrant's "PATIENT
PROTOCOL" mark for, among other items, "body cremes," "body
lotions" and "skin and body care products, namely, cleansers,
cleansing cremes, toners, ... gels, skin lotions, ... and creams
for application to the skin," would be likely to believe, upon
encountering applicant's substantially similar "PROTO-COL" mark
for, inter alia, "body creams," "body lotions" and "non-medicated
skin care preparations," that such identical in part and
otherwise commercially related goods emanate from, or are
sponsored by or affiliated with, the same source. Consumers
could reasonably believe, for instance, that applicant's "PROTO-
COL" products constitute a new or additional line of body creams,
body lotions and other non-medicated skin care preparations from
the same source as registrant's "PATIENT PROTOCOL" body cremes,
body lotions and other skin and body care products and vice
versa. To the extent, however, that there may be any doubt as to
our conclusion in this regard, we resolve such doubt, as we must,
in favor of the registrant. See, e.g., In re Chatam

Ser. No. 78779336
10
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948 (Fed.
Cir. 2004); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988); In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 156, 223 USPQ 1289, 1290 (Fed. Cir. 1984;
and In re Pneumatiques Caoutchouc Manufacture et Plastiques
Kleber-Columbes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.