Physicians Formula Cosmetics, Inc.v.Cosmed, Inc.

Trademark Trial and Appeal Board

Jun 23, 2008

No. 92040782 (T.T.A.B. Jun. 23, 2008)

Oral Hearing: March 13, 2008 Mailed: June 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

PHYSICIANS FORMULA COSMETICS, INC.
v.
COSMED, INC.
_____

Cancellation No. 92040782
_____

Lile Deinard and Bruce R. Ewing of Dorsey & Whitney for
Physicians Formula Cosmetics, Inc.

Jason M. Sneed of Alston & Bird LLP for Cosmed, Inc.
_____

Before Cataldo, Taylor and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Physicians Formula Cosmetics, Inc. (“petitioner”) has
petitioned to cancel Registration No. 2055813 for the mark
PHYSICIANS COMPLEX, owned by Cosmed, Inc. (“respondent”).
The registration issued on April 22, 1997 on the Principal
Register.1 The goods are identified therein as “cosmetics,
namely lip gloss, cosmetic facial and body skin care
products, namely exfoliation and masques, cleansers,

1 Section 8 affidavit accepted; Section 9 affidavit granted.
First renewal.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92040782
2
lotions, sprays, creams, gels, serums, and milks, and
toners; and sunblocks,” in International Class 3.
In its amended petition for cancellation, petitioner
alleges that it is the owner of Registration No. 1187307,
previously registered for the mark PHYSICIANS FORMULA for,
inter alia, “skin lotions, skin astringents, skin cleansers,
skin creams, make-up, lipsticks, face powders, mascara,
eyebrow pencils, eye liners, eye shadows, eye cream, rouges,
lip balm, sun screen preparations, eye makeup remover” in
International Class 3.2 Petitioner argues that as a result
of the similarity between the parties’ marks as applied to
their respective goods, confusion is likely among consumers
as to the source of those goods. In addition, petitioner
alleges that respondent committed fraud upon the United
States Patent and Trademark Office (USPTO).
In an order issued on March 11, 2005, the Board granted
petitioner’s motion for partial summary judgment on the
issue of fraud, and allowed petitioner thirty days in which
to inform the Board whether it wished to go forward on its
likelihood of confusion claim. Petitioner elected to go
forward on the claim of likelihood of confusion.

2 Registration No. 1187307 issued on January 26, 1982, with a
claim of acquired distinctiveness under Section 2(f) of the
Trademark Act, and asserting March 13, 1937 as the date of first
use of the mark anywhere and in commerce in connection with the
Class 3 goods. Section 8 and Section 9 affidavits accepted;
Section 15 affidavit acknowledged.
Cancellation No. 92040782
3
Subsequently, respondent filed an amended answer to the
amended petition for cancellation asserting a counterclaim
to cancel petitioner’s pleaded registration on the ground
that petitioner committed fraud by falsely claiming use of
its mark on hair spray when in fact petitioner never used
its mark on such goods. Thus, the issues on final in this
proceeding are petitioner’s claim of priority and likelihood
of confusion and respondent’s counterclaim of fraud upon the
USPTO.
The Record
The record in this case consists of the pleadings and
the file of respondent’s involved Registration No. 2055813
and petitioner’s involved Registration No. 1187307. In
addition, during its assigned testimony and rebuttal
testimony periods, petitioner took the testimony
depositions, with accompanying exhibits, of its Vice-
President of Marketing, Vivian Durra and its Vice President
and CFO, Joseph Jaeger. Petitioner also submitted two
notices of reliance. During its assigned testimony period,
respondent took the testimony deposition, with accompanying
exhibits, of its President, William Brewer and several
third-party owners of various PHYSICIAN formative marks.
Respondent also submitted a notice of reliance.
The parties have designated portions of the record and
Cancellation No. 92040782
4
briefs as “confidential.” While the information contained
therein plays a role in determining the issues before us, we
are mindful that such information was filed under seal.
Thus, we will endeavor to refer to those portions of the
record and briefs that are marked confidential only in a
very general fashion.
Petitioner and respondent filed main briefs and
rebuttal briefs on their respective claim and counterclaim.
In addition, counsels for both parties presented arguments
at an oral hearing held before the Board on March 13, 2008.
Findings of Fact
Petitioner was formed in 1937 and has continuously
provided hypoallergenic cosmetics under the PHYSICIANS
FORMULA mark since 1940.3 Petitioner’s cosmetics under the
PHYSICIANS FORMULA mark are recommended by allergists,
dermatologists, ophthalmologists, and plastic surgeons.4
Petitioner has experienced a steady increase in sales,
promotion, and expansion of its line of cosmetics under the
PHYSICIANS FORMULA mark.5 In 2003, a valuation analysis
commissioned by petitioner assigned a value to the
PHYSICIANS FORMULA mark of $29.5 million.6 Petitioner
currently markets approximately 250 products under the

3 Durra Testimony, p. 11-15, Exhibits A-B.
4 Id., Exhibits D and S.
5 Id., Exhibits C-E.
6 Id. at 17; Jeager Testimony, Exhibit 50.
Cancellation No. 92040782
5
PHYSICIANS FORMULA mark.7 These products are sold
nationwide through drug stores, mass merchandisers, food
stores, petitioner’s own Internet website as well as other
Internet retailers, and by telephone. Retailers selling
products under the PHYSICIANS FORMULA mark include CVS,
Duane Reade, Albertson’s, Kroger, Walgreen’s, Wal-Mart,
Target and K-Mart.8 In addition, until 2003 petitioner
directly marketed its products under the PHYSICIANS FORMULA
mark to physicians via in-office visits and direct mail.9
PHYSICIANS FORMULA products tend to retail for $2.95 to
$13.95, with a new microderm abrasion product selling for
$29.95.10 Wholesale sales of PHYSICIANS FORMULA products
from 2004 through 2006 exceeded $236 million, translating to
$330 million retail.11 Petitioner advertises its PHYSICIANS
FORMULA products on television; in print advertisements in
such publications as Women’s Wear Daily, Glamour, Elle,
Vogue, Cosmopolitan, Allure and Mass Market Retailer; by
printed mail circulars, which subsequently have been
replaced with electronic mail messages; and, in 2005, on an
electronic billboard in Times Square, in New York City.12

7 Durra Testimony, p. 10, 15, 20, 73-75, Exhibits C, D and S.
8 Id. at 22-26, Exhibit E.
9 Id. at 26-28, Exhibit F.
10 Id. at 73-75, Exhibit S.
11 Jaeger Testimony, Exhibit 50.
12 Durra Testimony at 33-44, Exhibits I, K-M.
Cancellation No. 92040782
6
Advertising expenditures for the time period from 2004 to
2006 increased from nearly $9 million to over $12 million.13
Respondent has offered skin care products under its
PHYSICIANS COMPLEX mark continuously since 1994.14
Respondent primarily sells its skin care products under the
PHYSICIANS COMPLEX mark directly to physicians and other
medical professionals who, in turn, sell such products to
their patients and clients. Respondent offers its products
primarily to physicians, medical spas, skin care
professionals, health maintenance organizations,
podiatrists, chiropractors, universities and medical
colleges. In so doing, respondent seeks to associate its
products with physicians and connote that its products are
endorsed or approved thereby.15 In addition, respondent
sells small amounts of its skin care products under the
PHYSICIANS COMPLEX mark to persons personally known to
respondent and its officers.16 Respondent’s products are
also available to all purchasers through Internet websites
such as lovelyskin.com, skincarex.com, totalskincare.com,
and drugstore.com.17 Respondent does not sell its products
under the PHYSICIANS COMPLEX mark directly to end users of

13 Jaeger Testimony, Exhibit 50; Durra Testimony p. 58-62, Exhibit
P.
14 Brewer Testimony, p. 11, 25-28.
15 Id. at 19.
16 Id. at 16-17.
17 Id. 43.

Cancellation No. 92040782
7
its products, or to retail establishments, drugstore chains
or mass marketers.18 Further, respondent refers consumers
and patients of health care professionals seeking to
purchase its goods directly from respondent back to the
health care professionals from which they first purchased
the products.19 Sales, and corresponding advertising
expenditures related to respondent’s products sold under its
PHYSICIANS COMPLEX mark, have been considerable. Respondent
advertises its goods primarily in medical trade and
marketing journals, including Plastic Surgery Products,
Cosmetic Surgery Times, Dermatology Times, Aesthetic Buyers
Guide, Rhinoplasty Society Journal, and Society of Plastic
Surgical Skin Care Specialists. Occasionally, respondent
advertises in publications directed toward end users, such
as Beautiful and Atlanta Woman.20 In addition, respondent
attends annual trade shows and conventions, including those
sponsored by the American Academy of Dermatology and Skin
Care Society.21 Respondent maintains an Internet website
through which healthcare professionals and others may obtain
information regarding its products under the PHYSICIANS
COMPLEX mark.22

18 Id. at 16-17.
19 Id. at 21-22.
20 Id. at 32, 34.
21 Id. at 29-30.
22 Id. at 36, 43.
Cancellation No. 92040782
8
Petitioner’s Standing
Because petitioner has properly made its pleaded
registration of record, and further has shown, by its use
and registration of a mark that is at least arguably similar
to respondent’s mark that it is not a mere intermeddler, we
find that petitioner has established its standing to
petition to cancel respondent’s registration for its
involved mark. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
Fraud
Prior to our consideration of petitioner’s claim of
priority and likelihood of confusion, we will address
respondent’s counterclaim to cancel petitioner’s pleaded
registration on the ground of fraud.23
The following facts regarding petitioner’s challenged
Registration No. 1187307 are not in dispute:
(1) petitioner’s application Serial No. 73295966, which
matured into its Registration No. 1187307, was filed
February 6, 1981 with a declaration signed by its first

23 We note that there is no question as to respondent’s standing
to bring this counterclaim inasmuch as respondent’s standing is
inherent in its position as defendant in the cancellation
proceeding. See Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc.,
14 USPQ2d 1879 (TTAB 1990); and BankAmerica Corp. v. Invest
America, 5 USPQ2d 1076 (TTAB 1987).

Cancellation No. 92040782
9
President, B.W. Bixler, averring that petitioner had adopted
and was using the PHYSICIANS FORMULA mark on, inter alia,
hair spray;24
(2) petitioner’s combined Section 8 and Section 15 affidavit
for its Registration No. 1187307 was filed January 14, 1988,
and signed by a subsequent President, Stephen F. Radcliffe,
averring that petitioner had been using the PHYSICIANS
FORMULA mark in commerce for the previous five years from
the date of registration to the present on, inter alia, hair
spray;25
(3) petitioner’s January 3, 2002 combined Section 8 and
Section 9 application for renewal of its registration and
declaration of use in commerce omitted, inter alia, hair
spray from its description of goods;26
(4) petitioner’s renewed registration certificate, dated May
31, 2005, inadvertently included hair spray, but not the
other goods excluded by petitioner in its January 3, 2002
application for renewal, in the description of goods;27
(5) petitioner’s April 28, 2006 request for corrected
certificate of registration points out the mistake and
requests deletion of hair spray from the description of
goods;28

24 Jaeger Testimony, Exhibit 1.
25 Id.
26 Id. at 9-12, Exhibit 2.
27 Id. at 12-13, Exhibit 3.
28 Id. at 13-14, Exhibit 4.
Cancellation No. 92040782
10
(6) petitioner’s Rule 30(b)(6) witness indicated that to the
best of her knowledge, petitioner does not sell hair spray
and has not done so during the time periods of 1991-1996 and
1998-present. In addition, petitioner’s 30(b)(6) witness
could not identify any person employed by petitioner who
would know whether petitioner sold hair spray under the
PHYSICIANS FORMULA mark at any time;29 and
(7) in response to respondent’s written discovery requests,
petitioner stated that none of its current employees has
knowledge of the products sold by petitioner at the time its
challenged registration was issued; that it was not selling
hair spray at the time it renewed its registration in 2002;
and that it has no documents demonstrating use of the
PHYSICIANS FORMULA mark on or in connection with hair
spray.30
Respondent argues that petitioner’s registration was
fraudulently obtained, and thus void ab initio, because
there is no evidence of record that petitioner ever used the
PHYSICIANS FORMULA mark on hair spray, despite its officers
signing both the declaration in the original application and
the combined Section 8 and Section 15 affidavit therefor
indicating that the mark was so used. Respondent further
argues that after it filed its January 3, 2002 application

29 Durra Testimony, p. 23-26.
30 Respondent’s notice of reliance.

Cancellation No. 92040782
11
for renewal that omitted hair spray from its identification
of goods, petitioner held itself out as owning a
registration that covered hair spray by failing to request
deletion thereof when it filed a January 21, 2005 motion to
correct an error in its registration regarding its state of
incorporation; and asserting in a cease and desist letter to
a third party that it owned a registration of PHYSICIANS
FORMULA for the goods listed in its renewed registration,
including hair spray.
Petitioner argues that when it renewed its registration
in 2002 it did not seek renewal as to, inter alia, hair
spray because it was no longer using the PHYSICIANS FORMULA
mark on such goods. However, petitioner argues that it did
not notice the USPTO’s inadvertent failure to omit hair
spray from its renewed registration until respondent raised
the matter in this proceeding. Petitioner further argues
that it subsequently requested correction of the error and
that such correction has been made. Petitioner agrees with
respondent that it has not used the PHYSICIANS FORMULA mark
on hair spray since 1991, but contends that the two filings
in which it avers such use were made previously, in 1981 and
1988. Petitioner further contends that ownership of
petitioner has changed five times over the last twenty
years31 and that, as a result, it has not retained complete

31 Jaeger Testimony, p. 16-17.
Cancellation No. 92040782
12
sales, advertising and other records dating back to the
relevant dates. Thus, petitioner contends that neither it
nor respondent can be certain whether petitioner used, or
did not use, the PHYSICIANS FORMULA mark on hair spray in
1981 or 1988. Petitioner contends in addition that it
stated in the above-noted correspondence to a third party
that hair spray was among the goods recited in its renewed
registration for its PHYSICIANS FORMULA mark in 2005 because
it overlooked the inclusion thereof in its identification of
goods until it was notified of it by respondent. Petitioner
maintains that, in any event, none of the actions complained
of by respondent are sufficient to support a finding of
fraud upon the USPTO.
For purposes of the Trademark Act, an applicant commits
fraud by knowingly making a false statement as to a material
fact in conjunction with a trademark application. See
Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23
USPQ2d 1064, 1065 (TTAB 1992). The statement in question:
(1) must be false; (2) must be made with knowledge that it
is false; and (3) must be material to the examining
attorney’s decision to approve the application.
The standard of proof for a fraud claim is the rigorous
clear-and-convincing-evidence standard, and it is strictly
applied. See Standard Knitting Ltd. v. Toyota Jidosha
Kabushiki Kaisha, 77 USPQ2d 1917, 1926 (TTAB 2006); and
Cancellation No. 92040782
13
Smith International Inc. v. Olin Corp., 209 USPQ 1033, 1044
(TTAB 1981)(“It thus appears that the very nature of the
charge of fraud requires that it be proven ‘to the hilt’
with clear and convincing evidence. There is no room for
speculation, inference or surmise and, obviously, any doubt
must be resolved against the charging party.”).
In American Flange & Manufacturing Co., Inc. v. Rieke
Corp., 80 USPQ2d 1397, 1416 (TTAB 2006), the Board made the
following observation:
In similar cases where the Board has found fraud,
it is generally crystal clear that the statement
in question is false. Usually the applicant or
registrant effectively admits that the statement
is false, or the record otherwise clearly
establishes that the relevant statement is false.

See, e.g., Torres v. Cantine Torresella S.r.L., 808 F.2d 46,
1 USPQ2d 1483, 1484-85 (Fed. Cir. 1986); Medinol Ltd. v.
Neuro Vasx Inc., 67 USPQ2d 1205, 1209 (TTAB 2003); and First
International Services Corp. v. Chuckles Inc., 5 USPQ2d
1628, 1636 (TTAB 1988).
In this case, as in American Flange, “we do not have
that kind of clarity. On the contrary, we have genuine
ambiguity.” Id. First, there is no admission by respondent
that it made a false statement in either the declaration
signed in support of its original application or its
combined Section 8 and Section 15 affidavit. Rather,
petitioner asserts that due to the passage of time and
several changes in petitioner’s ownership, it retains
Cancellation No. 92040782
14
neither personnel nor documentary evidence regarding use of
the PHYSICIANS FORMULA mark on hair spray at the times the
application and the combined Section 8 and Section 15
affidavit were filed. Thus, while petitioner has not
presented arguments and evidence that it used its mark on
hair spray at the relevant times, it has argued that it
possesses neither knowledge nor evidence of such use. This
falls far short of an admission by petitioner that the
statements contained in the 1981 and 1988 filings are false.
Similarly, the record in this case is insufficient to
establish that the statements contained in these filings are
false. Although petitioner’s inability to produce evidence
in support of its use of the PHYSICIANS FORMULA mark on hair
spray would be troubling under certain circumstances, in
this instance it is offset by the passage of time, i.e., 27
years and 20 years, since the filings in question and the
multiple changes in petitioner’s ownership. As a result, on
this record we have no evidence that the statements in
question are false. Nor do the circumstances of this case
give us sufficient cause to infer either that the statements
are false or were made with knowledge that they were false.
Further, petitioner acknowledges that in 2002,
subsequent to the statements in question, it took the
affirmative step of omitting from its application for
renewal of its registration those goods, including hair
Cancellation No. 92040782
15
spray, upon which petitioner was no longer using its
PHYSICIANS FORMULA mark. Hair spray was listed in the
renewal certificate among those goods in use by petitioner
apparently as a result of an error by the USPTO. We note
respondent’s argument that petitioner failed to correct this
error until the issue was raised by respondent, resulting in
petitioner falsely claiming to be the owner of a
registration for the mark PHYSICIANS FORMULA for hair spray
both on the register in general and to an assertedly
infringing third party, after it had acknowledged that it no
longer used the mark on such goods. However, even if
petitioner was holding itself out as owning a mark used on
hair spray, when in fact it knew it was not using the mark
on such goods, these statements do not constitute fraud upon
the Office since they were not made to the Office and thus
were immaterial to the procurement or maintenance of its
registration.
In short, we find insufficient evidence that petitioner
knowingly made false statements in its original application
and combined Section 8 and Section 15 affidavit. Further,
we find insufficient evidence that petitioner’s false
statements regarding use of its PHYSICIANS FORMULA mark on
hair spray after omitting those goods from its Section 9
affidavit were knowingly made or were material to
petitioner’s maintenance of the registration. While we
Cancellation No. 92040782
16
acknowledge that petitioner could produce no evidence to
support use of its mark on hair spray, we likewise find no
evidence to contradict petitioner’s arguments regarding the
lack of such evidence. Furthermore, we do not infer from
the circumstances of this case that petitioner’s statements
regarding its use of the PHYSICIANS FORMULA mark on
hairspray were false, and were made with the knowledge that
they were false. Particularly given the changes in
petitioner’s ownership and the elapsed time since the
questioned filings, and in the absence of clear and
convincing evidence required to support a finding of fraud,
we conclude, on this record, that petitioner did not commit
fraud in the procurement or maintenance of its Registration
No. 1187307.
We turn then to petitioner’s pleaded ground of priority
and likelihood of confusion.
Priority of Use
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent
may rely is the filing date of its underlying application.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See
also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995). In this case, the application that
matured into respondent’s registration at issue was accorded
a filing date of September 9, 1994. Inasmuch as respondent
Cancellation No. 92040782
17
has neither alleged nor introduced any evidence to support a
finding that it made earlier use of its PHYSICIANS COMPLEX
mark, we find that September 9, 1994 is the earliest date
upon which respondent is entitled to rely for purposes of
priority. Because the February 6, 1981 filing date of the
application which matured into petitioner’s pleaded
registration predates the September 9, 1994 filing date of
respondent’s underlying application, petitioner clearly has
established its priority.
Likelihood of Confusion
Our likelihood of confusion 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 issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods
Turning first to our consideration of the similarities
or dissimilarities between the parties’ goods, we note that
it is well established that the goods of the parties need
not be similar or competitive, or even offered through the
Cancellation No. 92040782
18
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion
as to the source thereof. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
In this case, registrant’s “cosmetics, namely lip
gloss, cosmetic facial and body skin care products, namely
exfoliation and masques, cleansers, lotions, sprays, creams,
gels, serums, and milks, and toners; and sunblocks” are
identical in part to the goods identified in petitioner’s
pleaded registration, namely, “skin lotions, skin
astringents, skin cleansers, skin creams, make-up,
lipsticks, face powders, mascara, eyebrow pencils, eye
liners, eye shadows, eye cream, rouges, lip balm, sun screen
preparations, eye makeup remover.” Specifically, both
Cancellation No. 92040782
19
petitioner and respondent provide skin cleansers, lotions
and creams under their respective marks. In addition,
respondent’s sunblocks appear on their face to be identical
or closely related to petitioner’s sun screen preparations.
Thus, as identified the parties’ goods are identical in part
or closely related. We note in addition that respondent
does not argue that the parties’ goods are unrelated. In
view of the fact that respondent is using its mark on goods
that are identical in part to certain of the goods
identified in petitioner’s pleaded registration, this du
Pont factor heavily favors petitioner.
Channels of Trade
Because the parties’ goods are identical in part, and
because there are no recited restrictions in either
respondent’s challenged registration or petitioner’s pleaded
registration as to the channels of trade or classes of
purchasers, we are not persuaded by respondent’s arguments
that its goods move in trade channels that are separate and
distinct from those in which petitioner’s goods are
encountered. Rather, we must assume that the goods are
available in all the normal channels of trade to all the
usual purchasers for such goods, and that the channels of
trade and the purchasers for respondent’s goods include
those of petitioner. See Interstate Brands Corp. v. McKee
Foods Corp., 53 USPQ2d 1910 (TTAB 2000). It is settled that
Cancellation No. 92040782
20
in making our determination regarding the relatedness of the
parties’ goods and/or services, we must look to the goods
and services as identified in the involved registration and
the pleaded registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) In
addition, we note that respondent’s goods are sold in
physician’s offices and over the Internet. Petitioner’s
goods are also sold over the Internet and, until 2003, were
marketed directly to physicians. Thus, the parties’ actual
trade channels are, in part, identical. Further, because
the parties are marketing identical goods through trade
channels that are identical in part and otherwise presumed
to be identical, and there is nothing in the record to
support a finding that such goods are marketed to different
Cancellation No. 92040782
21
classes of purchasers, we find that the goods would be
purchased by the same purchasers, namely, ordinary
consumers.
Because the trade channels for the parties’ goods are
presumed to be identical, and moreover are identical in
part, this du Pont factor also favors petitioner.
Conditions of Sale
The next du Pont factor discussed by the parties is
that of the conditions of sale. Respondent asserts that
consumers purchasing its goods “typically do so through
their doctor’s office and tend to be purchasing such goods
in the context of a medical setting, under the supervision
of a physician or other medical professional, or while
visiting their doctor for a medical condition” (brief, p.
29). Thus, respondent argues, its goods “are typically
purchased not as ‘impulse’ purchases, but instead in a
relatively careful and considered environment” (brief, p.
29-30). However, while respondent may sell its goods to
medical and health care professionals, the ultimate
purchasers of respondent’s goods, as resold by such health
care professionals, are the general public, who may not be
particularly discriminating purchasers. In other words,
simply because respondent’s goods are available from, for
example, physicians, medical spas, skin care professionals,
health maintenance organizations, podiatrists, or
Cancellation No. 92040782
22
chiropractors, it does not necessarily follow that such
goods are available only by prescription or under the advice
of a health care professional. In addition, respondent has
testified that its products are also available through
Internet websites such as lovelyskin.com, skincarex.com,
totalskincare.com, and drugstore.com to ordinary consumers
who may not exercise a high degree of care. Furthermore,
the goods of both parties are relatively inexpensive, and
thus may be purchased without a great deal of deliberation.
As a result, we find this du Pont factor to be neutral or to
slightly favor petitioner.
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion despite 13 years of
use by the parties of their respective marks. Respondent
asserts that the absence of actual confusion suggests no
likelihood of confusion. Petitioner, on the other hand,
argues that two calls received by respondent assertedly
inquiring into petitioner’s products are instances of actual
confusion. We find, on this record, that such evidence is
too tenuous to support a finding that actual confusion has
occurred. However, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Thus, while evidence
Cancellation No. 92040782
23
of actual confusion would strongly support a finding of
likelihood of confusion, the absence thereof does not
require a finding of no likelihood of confusion. See In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003) (“The lack of evidence of actual
confusion carries little weight.”)
Accordingly, this du Pont factor must be considered to
be neutral or to favor respondent only slightly.
The Marks
We turn then to the first du Pont factor, i.e., whether
respondent’s and petitioner’s marks are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is likely
to result.
We note that when marks would appear on identical
goods, as they do here, the degree of similarity between the
marks necessary to support a finding of likely confusion
declines. See Century 21 Real Estate v. Century Life, 970
Cancellation No. 92040782
24
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We further note
that while we must base our determination on a comparison of
the marks in their entireties, we are guided, equally, by
the well established principle that, in articulating reasons
for reaching a conclusion on the issue 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 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).
In this case, petitioner’s PHYSICIANS FORMULA mark is
similar to respondent’s PHYSICIANS COMPLEX mark in that both
share the identical word PHYSICIANS as their first term. We
find that the word PHYSICIANS, being the first term on both
parties’ marks, is the dominant feature in the commercial
impression created thereby. See Presto Products, Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“…[it is] a matter of some importance since it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.”).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin,
supra, (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the label). Furthermore, the
Cancellation No. 92040782
25
word FORMULA in petitioner’s mark refers back to, and
reinforces, the first word PHYSICIANS. Likewise, the word
COMPLEX in respondent’s mark refers back to, and reinforces,
PHYSICIANS. In addition, both marks as a whole suggest that
physicians endorse, recommend, or otherwise are responsible
for the parties’ products under their marks. Indeed, both
petitioner and respondent have testified that they have
sought to establish such a connotation in the minds of
consumers of their goods, and both have marketed their
products directly to physicians and other medical
professionals. Thus, we find that the word PHYSICIANS in
the parties’ marks contribute more significantly to their
commercial impressions than the terms FORMULA and COMPLEX.
In terms of appearance, sound, connotation and overall
commercial impression, we find that the similarities between
the parties’ marks which result from the presence of
PHYSICIANS as their first term outweigh the dissimilarities
resulting from the different second terms, FORMULA and
COMPLEX. Viewing the marks in their entireties, we find
that they are similar because the word PHYSICIANS is the
dominant, and identical, feature of both.
We are not persuaded by respondent’s argument that
petitioner’s PHYSICIANS FORMULA mark is weak or otherwise
entitled to a narrow scope of protection. As discussed
above, petitioner’s mark suggests a feature or
Cancellation No. 92040782
26
characteristic of its goods, namely, that they are endorsed
by physicians. However, petitioner has used its mark for
approximately 50 years, and has introduced testimony and
evidence indicating that it has experienced a high degree of
success in marketing and selling its goods under the
PHYSICIANS FORMULA mark. Further, and as noted above,
petitioner’s goods offered under its PHYSICIANS FORMULA mark
are encountered in numerous, well-known mass market
retailers, drug stores and grocery stores, as well as the
Internet, and are extensively advertised on television and
in well-known print publications. This evidence suggests a
substantial degree of recognition of petitioner’s goods. In
addition, petitioner has testified and introduced evidence
that it has undertaken a number of enforcement actions
against individuals and companies assertedly undermining its
mark in an effort to maintain its commercial strength.
Respondent’s evidence of eight third-party
registrations is entitled to limited probative value.
First, the registrations are not evidence of use of the
marks shown therein. Thus, they are not proof that
consumers are familiar with such marks so as to be
accustomed to the existence of the same or similar marks in
the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and
Cancellation No. 92040782
27
Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982).
Further, we do not consider Registration No. 2865758
for the mark PCA SKIN, which does not contain the word
PHYSICIANS, or Registration No. 2125309 for the mark
PHYSICIANS SELECT, that was cancelled as a result of
Cancellation No. 92040553 involving petitioner herein, to
have any probative value as to the strength of petitioner’s
mark. Moreover, petitioner has introduced testimony and
evidence that the owner of Registration No. 2403056 for the
mark PHYSICIAN’S CHOICE, has entered into an agreement with
petitioner herein regarding limitations to the use thereof
resulting from an earlier cancellation proceeding. Of the
remaining marks, Registration No. 1868806 consists of the
wording LUCRECE and a crest design with the additional
wording PHYSICIAN’S AESTHETIC RESEARCH appearing in very
small letters between them, and Registration No. 3024088
displays the wording CLEAR FACTOR in large letters and a
leaf design with the wording BY PHYSICIANS SKIN SOLUTION
displayed in much smaller letters. As a result, these marks
convey commercial impressions that are vastly different from
either party’s marks herein. The remaining three
registrations, arguably, are somewhat relevant to the marks
and goods at issue here. These include Registration No.
0434145 for the mark PHYSICIANS’ AND SURGEONS’ for soap;
Cancellation No. 92040782
28
Registration No. 2848803 for the mark PHYSICIAN MANAGED SKIN
REJUVENATION SYSTEM for a variety of skin care products; and
Registration No. 2903740 for the mark PHYSICIAN’S SKIN
SOLUTIONS, also for a variety of skin care products.
However, the fact that there are a few registrations for
such items does not indicate, even if there were evidence of
use, that petitioner’s mark is entitled to only a very
narrow scope of protection. The marks in the parties’
registrations herein are much more similar than any of the
third-party registrations made of record by respondent.
These third-party registrations simply show that the USPTO
has considered each of the marks and the goods in those
registrations in view of the unique facts of each case. In
addition, even if the goods in these registrations are
related to the goods in petitioner’s pleaded registration,
these third-party registrations may be used to demonstrate
that a mark or a portion of a mark is suggestive or
descriptive, but they cannot be used to justify the
registration of another confusingly similar mark. See In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See
also Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541,
544 (TTAB 1983) (“[T]hird party registrations relied on by
applicant cannot justify the registration of another
confusingly similar mark”). Therefore, while we can agree
that petitioner’s mark is somewhat suggestive of the goods,
Cancellation No. 92040782
29
such evidence does not show that it is so highly suggestive
as to be entitled to only a narrow scope of protection.
In addition, respondent has introduced testimony and
evidence regarding use by five third parties of various
PHYSICIAN formative marks.32 The first, V-SAB Medical
Laboratories, Inc., uses the mark BALANCE DERMACEUTICALS
PHYSICIAN’S FORMULA and the design of a human figure, and is
the owner of Registration No. 3037173 therefor, for goods
identified as “nutritional supplements, namely, oral
nutritional supplements and transdermal patches, lotions and
creams used to transmit nutritional supplements.” We note,
however, that not only is V-SAB’s mark less similar to the
parties’ marks than they are to each other, the goods
identified thereby are nutritional supplements delivered in
a variety of ways, that also are dissimilar from the goods
identified by the marks in the parties’ registrations. As
such, this registered third-party use is of limited
probative value regarding the strength of petitioner’s mark.
The second, Lane Labs, Inc., uses the unregistered mark
ANTI-AGING PHYSICIAN in connection with soap, skin cream and
skin gel. However, such mark conveys a commercial
impression that is quite different from those conveyed by
the parties’ marks herein and, as such, has little probative

32 As noted above, we will refer to the largely confidential
testimony and evidence regarding such third-party use only in a
very general fashion.
Cancellation No. 92040782
30
value as to the strength of petitioner’s PHYSICIAN’S FORMULA
mark.
The third, Dr. Ray Sahelian, uses PHYSICIAN FORMULAS
and physicianformulas.com primarily in connection with
nutritional supplements and also in connection with some
cosmetics. However, testimony and evidence of record
indicates that all of Dr. Sahelian’s cosmetics and the vast
majority of his nutritional supplements carry third-party
brands and do not carry the designation PHYSICIAN FORMULAS.
In addition, petitioner has testified that due to actual
confusion with Dr. Sahelian’s products, it has engaged in
two separate court actions against this third-party user,
one of which is ongoing. Thus, despite the similarities
between Dr. Sahelian’s mark and domain name to that of
petitioner, such mark or domain name does not appear to be
in use on related goods.
The fourth, PHYSICIAN’S ADVICE, offered goods on the
Home Shopping Network until 2005, and further use of
PHYSICIAN’S ADVICE on that channel’s liquidation website on
the Internet appears to have ceased.
The fifth, FORMULARY FOR PHYSICIANS, INC., offers two
or three cosmetic products under separate marks. Testimony
and evidence of record indicates that FORMULARY FOR
PHYSICIANS does not appear in advertising or marketing
Cancellation No. 92040782
31
materials for such goods, and is not widely recognized as a
mark or trade name.
Taken as a whole, the evidence of third-party use and
registration of various PHYSICIAN formative marks suggests
that there has been use of marks and trade names similar to
that of petitioner for similar goods; however, such uses
have largely been challenged or otherwise addressed. The
evidence further suggests use of various PHYSICIAN formative
marks and trade names on unrelated, or less closely related,
goods. Accordingly, we find on the totality of this record
that the evidence is insufficient to show that petitioner’s
PHYSICIANS FORMULA mark is weak and thus entitled only to a
narrow scope of protection. We note in addition that even
if petitioner’s PHYSICIANS FORMULA mark was found to be a
weaker mark entitled to a narrower scope of protection, such
scope would nonetheless be sufficient to prevent the
registration of such a highly similar mark as that of
respondent for goods that are, in part, identical.
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to priority of use and the relevant du
Pont factors, and fraud, as well as all of the parties’
arguments with respect thereto, including any evidence and
arguments not specifically discussed in this opinion.
Cancellation No. 92040782
32
We conclude that petitioner has established priority of
use and that consumers familiar with petitioner’s goods
under its PHYSICIANS FORMULA mark would be likely to
believe, upon encountering respondent’s PHYSICIANS COMPLEX
mark for its goods, that the parties’ goods originate with
or are associated with or sponsored by the same entity. In
making our determination, we have balanced the relevant du
Pont factors. The factors of the identity in part of the
goods and the similarities in the marks weigh strongly in
petitioner’s favor.
DECISION: By operation of the Board’s March 11, 2005 order
granting petitioner’s motion for partial summary judgment,
the petition to cancel on the ground of fraud is granted.
Based upon our findings above, the petition to cancel on the
ground of priority and likelihood of confusion is granted.
Registration No. 2055813 will be cancelled in due course.
The counterclaim petition to cancel petitioner’s pleaded
registration is denied.