Picture Polish Pty Ltd

Trademark Trial and Appeal Board

Aug 12, 2013

No. 85424183 (T.T.A.B. Aug. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Picture Polish Pty Ltd
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Serial No. 85424183
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Matthew H. Swyers of The Swyers Law Firm PLLC for T & C Imports.

Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Kuhlke, Shaw and Gorowitz, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Picture Polish Pty Ltd, filed an application to register on the
Principal Register the mark PICTURE POLISH in standard character form for
goods identified as:
Aromatic body care products, namely, body lotion, shower gel, cuticle
cream, shampoo, conditioner, non-medicated lip balm, soap, body
polish, body and foot scrub and non-medicated foot cream; False nails;
Nail art stickers; Nail buffing preparations; Nail care kits comprising
nail polish; Nail care preparations; Nail care preparations, namely,
nail softeners; Nail cream; Nail enamel; Nail enamel removers; Nail
enamels; Nail gel; Nail glitter; Nail grooming products, namely, tips,
glue, lacquer and glitter; Nail hardeners; Nail polish; Nail polish base
coat; Nail polish protector in the nature of a thin plastic covering
applied to nails; Nail polish remover; Nail polish removers; Nail polish
top coat; Nail repair products, namely, linen nail wraps; Nail repair
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products, namely, nail wraps; Nail repair products, namely, silk nail
wraps; Nail stencils; Nail strengtheners; Nail tips; Nail varnish; Nail
varnish for cosmetic purposes; Nail varnishes; Nail-polish removers, in
International Class 3.1

In response to a request from the examining attorney, applicant disclaimed the
word POLISH.
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods, so resembles the registered mark PICTURE in standard character form for:
colognes, perfumes and cosmetics; cosmetics in general, including
perfumes; disinfecting perfumed soaps; eau de perfume; essential oils
as perfume for laundry purposes; liquid perfumes; oils for perfumes
and scents; perfume; perfume oils; perfume oils for the manufacture of
cosmetic preparations; perfumed creams; perfumed extracts for tissues
and perfumes; perfumed paste; perfumed powder; perfumed powders;
perfumed soap; perfumed soaps; perfumed talcum powder; perfumes;
perfumes and colognes; perfumes and toilet waters; perfumes,
aftershaves and colognes; perfumes, eau de colognes and aftershaves;
perfumes, eaux de cologne and aftershaves; perfuming sachets, in
International Class 32

as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant requested reconsideration which
was denied on October 15, 2012. Applicant then appealed the refusal and briefs
have been filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476

1 Application Serial No. 85424183, filed on September 15, 2011, based on allegations of first
use and first use in commerce on April 1, 2009, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).

2 Registration No. 3572598, issued on February 10, 2009.
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F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
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 or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first consider the marks PICTURE POLISH and PICTURE and compare
them “in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177
USPQ at 567.
We analyze the marks in their entireties; however, it is well settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature when evaluating the similarities of the
marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Here, the word PICTURE is the most prominent portion of applicant’s mark.
It is the first portion of the mark and the most distinctive. The added word
POLISH is merely descriptive or generic and appropriately disclaimed in the
application. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997).
Applicant’s mark PICTURE POLISH incorporates the entirety of registrant’s
mark PICTURE and the only distinguishing element is the merely descriptive or
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generic word POLISH disclaimed in applicants’ mark. In general, the addition of
merely descriptive matter does not obviate a finding of similarity. In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004). In particular, here,
where as the examining attorney notes “the proposed goods could be perceived as a
part of a series of PICTURE marks, the subject one being used for polishes.” E.A.
Br. p. 6. Thus, while the added word does present some difference in appearance
and sound, the overall commercial impression and connotation remain the same in
view of the dominance of the word PICTURE in the marks. In view thereof, we find
that the similarities outweigh the dissimilarities. Viterra Inc., 101 USPQ2d 1905.
Applicant argues that the term PICTURE is weak and entitled to a limited
scope of protection. However, applicant only submitted three third-party
registrations which are of little probative value for the du Pont factor showing a
crowded field and relative weakness. See In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1259 (Fed. Cir. 2010); AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 1406, 177 USPQ 268, 269 (CCPA 1973); In re Davey Prods. Pty Ltd., 92
USPQ2d 1198, 1204 (TTAB 2009). Moreover, the marks in these registrations are
combined with other non-descriptive terms that arguably create different
commercial impressions.3

3 Reg. No. 2896369 for the mark PICTURE POREFECT for “skin care products, namely, a
non-medicated preparation to improve blackheads and pores”; Reg. No. 4206315 for the
mark PIC A COLOUR for “cosmetics”; Reg. No. 2670376 for the mark PICTURE THE
RESULTS for “cosmetic and plastic surgery; medical services, namely, providing
dermatology.” We do not consider the third-party application which has no probative value
on this point, Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007).

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This evidence is not sufficient to establish that the mark in the cited
registration is weak.
We turn next to a consideration of the goods, channels of trade and class of
purchasers. We must make our determinations under these factors based on the
goods as they are identified in the registration and application. Dixie Rests., 41
USPQ2d at 1534. See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The
goods need not be identical or even competitive to find a likelihood of confusion. See
On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000). The respective goods need only be “related in some manner
and/or if the circumstances surrounding their marketing [be] such that they could
give rise to the mistaken belief that [the goods] emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1722 (Fed. Cir. 2012) quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007).
The examining attorney argues that the wording “colognes, perfumes and
cosmetics; cosmetics in general, including perfumes” in the cited registration
encompasses all of applicant’s goods based on the following definition of “cosmetics”:
“a powder, lotion, cream, or other preparation for beautifying the face, skin, hair,
nails, etc.:”4 She argues that applicant’s goods are “preparations for beautifying the

4 The American Heritage Dictionary of the English Language (4th ed. 2009) retrieved from
www.freedictionary.com. The Board grants the examining attorney’s request and takes
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face, skin, hair, and nails,” in particular, applicant’s “nail varnishes for cosmetic
purpose, nail polish, nail care preparations; aromatic body lotion, shower gels,
soap.” E. A. Br. p. 11. We agree that registrant’s broadly worded identification
encompasses applicant’s goods.
In addition, to the extent the goods are not legally identical, in support of her
position that registrant’s fragrance goods and applicants body lotion and nail polish
goods are related, the examining attorney submitted several use-based third-party
registrations for both types of goods under the same mark. See Office Action
(January 9, 2012) (Reg. No. 3084865 for a design mark for, inter alia, perfume,
cologne, nail enamel, nail conditioner, body lotion and soaps; Reg. No. 3114295 for
the mark EDWARD BESS for, inter alia, nail polishes, nail care preparations, body
lotions, soaps, perfumes, colognes; Reg. No. 4050476 for the mark UD for, inter alia,
body lotion, fragrances and perfumery, nail care preparations, nail polish; and Reg.
No. 4038221 for the mark BEACH BUNNY for, inter alia, nail polish, perfumes).
She also she submitted third-party web pages displaying fragrances and nail
polish under the same mark offered for sale on the same web page. See Office
Action (August 6, 2012) (DESTINED perfume and nail polish at www.tillys.com).
Her submissions include web pages offering scented nail polish, a product that
combines applicant’s and registrant’s goods. See Office Action (August 6, 2012)
(PeriPera perfume nail polish at www.periperaus.com). We find this evidence

judicial notice of the offered dictionary definition. In re Red Bull GmbH, 78 USPQ2d 1375,
1378 (TTAB 2006). See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
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sufficient to establish that the applicant’s body lotions and nail polish items are
related to registrant’s various perfumes and scented goods.
Considering the channels of trade and classes of purchasers, because the
goods are legally identical and/or closely related and there are no limitations as to
channels of trade or classes of purchasers in either the application or cited
registration, we presume that applicant’s and registrant’s goods will be sold in the
same channels of trade and will be bought by the same classes of purchasers.
Viterra Inc., 101 USPQ2d at 1908. See also Hewlett-Packard Co. v. Packard Press
Inc., 62 USPQ2d 1001; Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
The record also supports this finding, showing perfumes and nail polish sold on the
same web page.
Applicant’s arguments regarding the differences in the actual goods and
channels of trade are not persuasive inasmuch as we must make our determination
based on the goods as identified, and here, the identifications of goods in the
registration and application are not limited to any particular channel of trade. See
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, again, because we are bound by the
description of goods in the application and registration and because the descriptions
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of goods are not restricted as to price or channel of trade, the goods at issue must
include inexpensive as well as more expensive nail polish and fragrances and
include all classes of consumers from the general public. The standard of care for
our analysis is that of the least sophisticated purchaser. Alfacell Corp. v.
Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
As a general proposition, inexpensive goods may be purchased with less care,
which increases the likelihood of confusion. Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-
priced and subject to impulse buying, the risk of likelihood of confusion is increased
because purchasers of such products are held to a lesser standard of purchasing
care”) (citations omitted). Moreover, even if purchasers are sophisticated or
knowledgeable in a particular field that does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion. Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d
1526, 1530 (Fed. Cir. 1995). Thus, despite the possibility that the purchasers of
lotion or nail polish may exercise a certain amount of care to ensure they are
purchasing what they require, we find this factor also favors finding a likelihood of
confusion.
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The contemporaneous use of applicant’s and
registrant’s marks for a period of approximately four years without actual confusion
is entitled to little weight. See Majestic Distilling Co., Inc., 65 USPQ2d at 1205
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(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ
528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate
president’s unawareness of instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no likelihood of confusion). The lack
of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex
parte context. In any event, there is not sufficient evidence relating to the extent of
use of registrant’s marks and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). Accordingly, the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use without evidence of actual
confusion is considered neutral.
Finally, applicant’s statements that the mark in the cited registration may
have been abandoned due to nonuse, constitutes an impermissible collateral attack
on the cited registration and such evidence and argument are not relevant in the
context of an ex parte appeal. Dixie Rests., 41 USPQ2d at 1534-35.
In conclusion, because the marks are similar, the goods are legally identical
and/or closely related, and the channels of trade and consumers are the same or
overlapping, confusion is likely between applicant’s mark PICTURE POLISH and
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the mark PICTURE in the cited registration. Finally, to the extent that any of the
points argued by applicant cast doubt on our ultimate conclusion on the issue of
likelihood of confusion, we resolve that doubt, as we must, in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.