Pierre Fabre Sante

Trademark Trial and Appeal Board

Mar 12, 1998

No. 74735962 (T.T.A.B. Mar. 12, 1998)

Paper No. 11
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 12, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Pierre Fabre Sante
___________
Serial No. 74/735,962
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Gordon W. Hueschen and G. Patrick Sage of The Firm of Gordon
W. Hueschen for applicant.
Dominick J. Salemi, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Pierre Fabre Sante, a corporation of France, has filed
a trademark application to register the mark PHYTAROMA for
“medicated preparations for skin care, hygiene and diseases,
for the prevention and treatment of respiratory and
digestive problems and diseases, antalgic preparations,
digestive and circulatory tonics, dietary food supplements”
Serial No. 74/735,962
2
in International Class 5.1 The application originally
included “cosmetics and cleaning preparations; namely, skin
balms, creams and lotions” in International Class 3.
However, following the issuance of a final refusal to
register, applicant deleted the goods in International Class
3 from the application.
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark PHYTARÔMES and design, as shown below,
previously registered for “essential oils for personal
use,”2 that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or
to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated

1 Serial No. 74/735,962, filed September 29, 1995, under Section 44(e)
of the Trademark Act, 15 U.S.C. 1126(e), based on French Registration
No. 1,505,763.
2 Registration No. 1,607,925, issued July 31, 1990, to Sharon Christie
TA Sharon Christie Ltd., Clinical Baby Care, in International Class 3.
Sections 8 and 15 affidavit accepted and acknowledged, respectively.
Serial No. 74/735,962
3
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). As discussed herein, while we have
found the commercial impressions of applicant’s and
registrant’s marks to be substantially similar, we cannot
find, on this record, that the identified goods are related
such that the use of similar marks on the parties’
respective products is likely to cause confusion.
Considering, briefly, the marks, we find that the word
portion of registrant’s mark is dominant, as the design
element in registrant’s mark is merely an outline that
serves to emphasize the word portion of registrant’s mark
and to distinguish the two syllables comprising the word
portion of the mark. Comparing applicant’s mark to the word
portion of registrant’s mark, we find the words PHYTARÔMES3
and PHYTAROMA to be equivalent in meaning and connotation4
and substantially similar in appearance and sound. We find
that the overall commercial impressions of these two marks
are substantially similar.5

3 We judicially notice the definition from the Modern French-English
Dictionary (Libraire Larousse, undated) submitted with applicant’s brief
of “arôme” indicating it is a French word meaning, in English, “aroma,
favour; fragrance.”
4 Except under certain circumstances not indicated herein, in
considering the meaning and connotation of a mark in the context of a
determination of likelihood of confusion, there is no distinction
between English terms and their foreign equivalents, despite the fact
that the foreign term may not be commonly known to members of the
general public in the United States. See, In re Atavio Inc., 25 USPQ2d
1361 (TTAB 1992) and cases cited therein.
5 In reaching this conclusion, we were not persuaded by applicant’s
argument that registrant’s mark is highly suggestive and, thus, entitled
Serial No. 74/735,962
4
Turning to the goods, we note that the parties’ goods
need not be identical or even competitive in order to
support a finding of likelihood of confusion. However, it
is necessary that the parties’ goods are related in some
manner or that circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
We judicially notice the definition of “essential
oil,”6 the goods identified in the cited registration, as
follows:
n. Any of a large class of odoriferous oils of
vegetable origin that impart to plants odor and
often other characteristic properties, that are
obtained from various parts of the plant (as
flowers, leaves or bark) by steam distillation,
expression, or extraction, that are usually
mixtures of compounds . . . and that are used
often in the form of essences in perfumes,
flavoring materials, and pharmaceutical
preparations.

to a limited scope of protection. A registered mark is presumed valid
and is entitled to protection against the registration of confusingly
similar marks, regardless of whether the registered mark is suggestive.
Nor will we entertain applicant’s contention that registrant’s mark is
merely descriptive of the identified goods. Such an assertion is
essentially an attack on the validity of the registration which is
properly addressed in an inter partes cancellation proceeding, not in an
ex parte appeal.
6 Webster’s Third New International Dictionary, 1976.
Serial No. 74/735,962
5
The Examining Attorney contends that applicant’s goods
“are the kind that a purchaser would associate with the
manufacturer of essential oils as most drugstores and
cosmetic houses often sell both medicated and non-medicated
skin care and cosmetics side by side.” However, the
Examining Attorney has not provided any evidence to show
that the registrant’s identified essential oils for personal
use and applicant’s identified medicated preparations travel
in the same channels of trade or are purchased by the same
class of consumers. Indeed, the Examining Attorney has not
made any evidence of record in this application. The only
information we have as to the goods are the identifications
recited in the application and the cited registration, and
the dictionary definition of “essential oil” which we have
judicially noticed.
It would appear from the dictionary definition that
“essential oils for personal use” would be used as essences
in perfumes and pharmaceutical preparations and, therefore,
would be purchased by the manufacturers of such products.
There is no evidence in this record from which we can
conclude that registrant’s goods would be purchased directly
by the public or that, as the Examining Attorney contends,
these goods are, in and of themselves, a cosmetic that would
be sold in the same stores and in close proximity to
medicated skin care products. On the other hand, it would
Serial No. 74/735,962
6
appear that medicated preparations, as identified in this
application, could be purchased by the general public as
well as by the medical community for the treatment of
patients.7
While the commercial impressions of applicant’s mark,
PHYTAROMA, and registrant’s mark, PHYTARÔMES and design, may
be substantially similar, in view of the lack of evidence of
any overlap in channels of trade or classes of customers, we
find that the Examining Attorney has failed to prove that
applicant’s and registrant’s goods are related such that the
contemporaneous use of the marks herein on the identified
goods is likely to cause confusion as to the source or
sponsorship of such goods. Thus, we must reverse the
refusal to register.
We hasten to point out that our decision rests on the
evidence of record and that, in this case, the Examining
Attorney had not made any evidence of record. Thus, if we
were presented with a different record, for example, in an

7 We have not been persuaded by applicant’s argument that the parties’
goods are different because they are classified in different
International Classes. The classification of goods and services in
trademark applications is for the administrative ease of the PTO and is
neither relevant to, nor determinative of, likelihood of confusion. In
re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992). Thus, the fact
that applicant’s goods are classified in International Class 5
(Pharmaceuticals) does not somehow render them distinguishable from
registrant’s products, which are classified in International Class 3
(Cosmetics). Likewise, we have not been persuaded by applicant’s
allegations regarding the alleged scope of registrant’s business and
registrant’s intent, or lack thereof, to expand into other fields.
Serial No. 74/735,962
7
inter partes proceeding, we might arrive at a different
conclusion.
Decision: The refusal under Section 2(d) of the Act is
reversed.
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board