Oren David Inc.

Trademark Trial and Appeal Board

Apr 22, 2013

No. 85383735 (T.T.A.B. Apr. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Oren David Inc.
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Serial No. 85383735
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Jason R. Lee, Esq. for Oren David Inc.
Kelley L. Wells, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
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Before Seeherman, Taylor and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Oren David Inc. filed an application1 to register on the Principal Register the
mark set forth below:

Applicant seeks registration for the following goods:
After shave lotions; Aftershave; Anti-aging creams;
Aromatic body care products, namely, body lotion, shower

1 Application Serial No. 85383735, filed under Trademark Act § 1(a), 15 U.S.C. § 1051(a), on
July 28, 2011, with a claim of first use as of March 1, 2011 and first use in commerce as of
May 15, 2011.
Serial No. 85383735

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gel, cuticle cream, shampoo, conditioner, non-medicated
lip balm, soap, body polish, body and foot scrub and non-
medicated foot cream; Bar soap; Body and beauty care
cosmetics; Body cream soap; Body creams; Body
deodorants; Body masks; Body scrub; Face creams for
cosmetic use; Facial beauty masks; Facial moisturizer
with SPF; Hair rinses; Hair shampoo; Hair shampoos and
conditioners; Non-medicated anti-aging serum; Non-
medicated facial and eye serum containing antioxidants;
Shave creams; Shaving balm; Shaving cream; Shaving
creams, in International Class 3.
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s goods, so resembles the mark OD, which is registered in
standard character form for “shampoo,”2 as to be likely to cause confusion, or to
cause mistake, or to deceive. When the refusal was made final, applicant filed a
notice of appeal and a request for reconsideration. On reconsideration, the
examining attorney maintained her refusal and this appeal resumed. Applicant
and the examining attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

2 Reg. No. 1105856, issued on November 14, 1978; renewed.
Serial No. 85383735

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Addressing first the goods of applicant and registrant, we find that they are
legally identical. “Shampoo” is identified in both the application and the cited
registration. At first blush, it would also appear that the remainder of applicant’s
goods, which are various kinds of soaps, body care products, and cosmetics, are
closely related to the shampoo identified in the registration. However, we need not
decide that question. In the context of an analysis under Section 2(d), it is sufficient
if likelihood of confusion is found with respect to use of the mark on any product
that comes within the descriptions of goods in the application or registration.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398
(TTAB 2007).
Applicant argues that the goods of registrant are medicated products, as
demonstrated by the specimens of use filed by registrant and by an internet web
site located at .3 We cannot consider this purported limitation on
the scope of the goods of registrant because no such limitation is reflected in the
registration. In considering the scope of the cited registration, we look to the
registration itself and not to extrinsic evidence about the registrant’s goods. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart,

3 Applicant’s brief at 7. Applicant made of record the specimens filed by registrant at the
time of the renewal of the registration as well as the web site excerpt with the response of
May 9, 2012. The specimens do not clearly indicate that the goods are medicated, even
though one of the hangtags includes a reference to “Norman Orentreich, M.D.” We note,
moreover, that the web site proffered by applicant, which relates to “Orentreich Medical
Group,” has no clear connection to the owner of the cited registration. Although Norman
Orentreich was the original owner of the cited registration, the current owner of record is
Ideation Unlimited, Inc.
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Inc., 119 USPQ 139 (CCPA 1958). The registration on its face relates to ordinary
“shampoo.” Medicated shampoo is classified in International Class 5, not Class 3.
Accordingly, the du Pont factor of the similarity or dissimilarity of the goods
strongly favors a finding of likelihood of confusion.
To the extent that applicant’s goods are identical to those of registrant, we
must presume that those goods move in the same channels of trade as registrant’s
goods and are available to the same classes of customers as registrant’s goods. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994). These two du Pont factors favor a finding of likelihood of
confusion.
We now address the similarity or dissimilarity of the marks at issue as to
their appearance, sound, connotation and commercial impression. In comparing the
marks, we are mindful that where, as here, the goods are identical, the degree of
similarity necessary to find likelihood of confusion need not be as great as where
there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
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Applicant and the examining attorney have disagreed regarding the
dominant portion of applicant’s mark; they differ, for example, as to whether
customers would first notice the designation OD or the name OREN DAVID.
However, both applicant and the examining attorney agree that the marks must be
considered in their entireties; and both have appropriately considered the
interaction between the terms OD and OREN DAVID in applicant’s mark and how
this interaction relates to the cited registered mark. Both have noted that
customers have often been exposed to trademarks that combine initial letters with a
proper personal name. The record contains examples of U.S. registrations for the
marks CK CALVIN KLEIN, CK ONE CALVIN KLEIN, and CALVIN KLEIN;
RALPH LAUREN and RL; and DIANE VON FURSTENBERG and DVF, among
others.4 The amount of such evidence is not great, and the registrations are
primarily in the field of fashion apparel rather than toiletries. However, applicant
has not disputed the relevance of such evidence, and we find it probative of the fact
that businesses have sought to promote trademarks that consist of the initial letters
of a personal name alongside other trademarks that consist of the related personal
name.
Applicant argues:
[T]he average consumer is used to seeing initials coupled
with the main literal element of a mark…. The average
consumer does not call for “EL,” they call for Estee
Lauder. The average consumer does not call for “CK,”
they call for “Calvin Klein.” The average consumer does
not call for “CC,” they call for Chanel. … When seen,

4 Submitted with Office action of June 4, 2012.
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marks of this type are called for by their full name, not
their abbreviations.
Applicant’s brief at 6.
When the average consumer calls for the Registrant’s
products, they will call for OD. When the average
consumer calls for the Applicant’s products, they will call
for “Oren David.”
Id. at 5.
The examining attorney counters with:
This just goes to support the idea that if the name is used
to call for the product when only initials are used
consumers could likely think that OD shampoo comes
from the same source as O D OREN DAVID shampoo and
toiletries and reference the registrant’s goods as Oren
David.
Examining attorney’s brief at 6.
It is significant that applicant’s mark encompasses registrant’s mark OD in
its entirety. In such circumstances, likelihood of confusion has often been found.
See Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156
(TTAB 1982) (EBONY DRUM for hairdressing and conditioner confusingly similar
to EBONY for cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB
1979) (HEAD START COSVETIC for vitamins for hair conditioners and shampoo
confusingly similar to HEAD START for men’s hair lotion and after-shaving lotion);
The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair
spray, conditioner and shampoo confusingly similar to CONCEPT for cold
permanent wave lotion and neutralizer).
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In a substantially similar case, the Federal Circuit considered a refusal to
register the mark ML for personal care products including skin soap, body wash,
foam bath, body lotion and body scrub. The registered mark that formed the basis
of the refusal was ML MARK LEES, in stylized lettering, for similar skin care
products. The Court affirmed the Board’s decision that confusion was likely,
approving the Board’s finding that ML was likely to be perceived as a shortened
version of ML MARK LEES. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257 (Fed. Cir. 2010).
As the examples of “initial letter” marks suggest, the structure of applicant’s
mark may indicate to customers who have seen the registrant’s OD mark that OD
means OREN DAVID. In a somewhat analogous case, where the marks FOLIO and
FOLIO BY FIRE ISLANDER were compared, the Board found that “the use of the
phrase BY FIRE ISLANDER may only tend to increase and not decrease the
likelihood of confusion [with FOLIO].” Saks & Co. v. TFM Indus. Inc., 5 USPQ2d
1762, 1764 (TTAB 1987). Similarly, where the marks SPARKS and SPARKS BY
SASSAFRAS were compared, the Board stated:
The words “by sassafras” indicate to prospective
purchasers that “sassafras” is the name of the entity
which is the source of the “SPARKS” brand clothing.
Prospective purchasers do not necessarily know or care
which business calls itself “sassafras,” but they would
assume that when “SPARKS” appears on two similar
products they both come from the same source.
In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986). See also In re
Riddle, 225 USPQ 630 (TTAB 1985) (“Richard Petty's Accu Tune” likely to cause
confusion with “Accutune”). By comparison, applicant’s mark could reasonably be
Serial No. 85383735

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interpreted to deliver the message, “O D brand by Oren David,” a message that
conflicts with the intended message of the cited registered mark.
We also disagree with applicant’s contention, quoted above, that customers
do not use the “initial” marks in calling for the goods. The registrations of the
marks RL and DVF indicate that their owners have sought to promote such initial
designations as trademarks in their own right, as do the registrations for CK
CALVIN KLEIN and CK ONE CALVIN KLEIN, both of which are in stylized forms
that greatly emphasize the CK portion of the mark.
Applicant contends further that the registered mark OD will be taken to
mean “once daily,” a significance that differs from the meaning of applicant’s mark.5
This argument is based in part on the specimens of use that were submitted in
connection with renewal of the registration. One such specimen is a label that
includes the words “(Use once a day).” However, registrant need not always display
its mark in connection with the words “(Use once a day).” Indeed, another specimen
label lacks any reference to daily use; a third specimen, a bottle, includes the words
“Shampoo daily as needed,” a phrase that does not associate the letters OD with
“once daily.” Applicant has also submitted evidence6 from a glossary of
abbreviations indicating that “od” is a medical term, derived from the Latin “omni
die,” meaning “every day, usually regarded as once daily.” Applicant argues that
“once daily” is the meaning of OD “in the medical/physiology field, which is where
we would expect a shampoo with medical overtones would fall.” However, as noted

5 Applicant’s brief at 7-8.
6 Submitted with applicant’s response of May 9, 2012.
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above, the registration covers ordinary “shampoo,” not medicated shampoo, and
therefore we cannot conclude that customers would associate the medical meaning
of OD with registrant’s goods or interpret registrant’s mark in this way.
Finally, we note applicant’s argument that the graphic elements of its mark
“substantially contribute to the overall appearance, and commercial impression, of
the mark.”7 The graphic elements of the mark consist primarily of the layout of the
wording. However, both the layout and the style of lettering are relatively common
and non-distinctive. The one non-literal graphic element is a single vertical line
between the letters O and D, which is not highly distinctive. We must bear in mind
that the cited mark is registered in standard character form, such that the
protections of registration are not limited to any particular font, size, style or color.
In re Mighty Leaf Tea, 94 USPQ2d at 1258. Thus, registrant might well use a
simple lettering style that resembles that of applicant. (Indeed, the one specimen of
registrant’s bottle does show stylistic similarities to applicant’s lettering style and
layout, including the presentation of OD in upper case sans serif letters, alone on its
own line, stacked above other text.) Overall, the graphic aspects of applicant’s mark
do not alter the likely perception and interpretation of the mark by the public that
we have discussed above in this decision.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as

7 Applicant’s brief at 8-9.
Serial No. 85383735

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applied to applicant’s goods, so closely resembles the cited registered mark as to be
likely to cause confusion, mistake or deception as to the source of applicant’s goods.
Decision: The refusal is affirmed.