ReneFrancois Niforos

Trademark Trial and Appeal Board

Jan 29, 2010

No. 77012622 (T.T.A.B. Jan. 29, 2010)

Mailed:
January 29, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re René-François Niforos
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Serial No. 77012622
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B. Parker Livingston, Jr. of Buchanan Ingersoll & Rooney,
P.C. for René-François Niforos.

Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Grendel, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

René-François Niforos (Applicant) has applied to
register the mark MEDICEUTICS in standard characters on the
Principal Register for goods identified as:
perfumery products, namely, perfumes, cologne
waters, scented linen waters, essential oils,
oils for cosmetic use; soaps for body care and
soaps for personal use, skin soaps; alum stones
for personal use; shaving soaps, shaving balms
and lotions, after-shave balms and lotions;
deodorants for body care; non-medicated bath
salts; cosmetic preparations for body care,
namely, skin creams, skin milks, skin lotions;
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77012622
2
make-up, make-up removing preparations; cotton
sticks for cosmetic purposes; cosmetic
preparations for eye lashes; lipsticks; nail
polish, nail varnish, nail care preparations;
beauty masks; depilatories; cosmetic sun-tanning
preparations; anti-cellulite creams; all of the
aforementioned goods being under the supervision
of medical providers, in International Class 3.1

The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. 1052(d), on the
grounds that Applicant’s MEDICEUTICS mark is likely to be
confused with the mark MEDICEUTICALS in typed form in
Registration No. 932375 for goods identified as “hair
shampoo” in International Class 3. The registration issued
on April 11, 1972, and it has been renewed twice.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the

1 Application Serial No. 77012622, based on Registration No.
063449406 in France under Trademark Act Section 44(e), 15 U.S.C.
§ 1126(e).
Serial No. 77012622
3
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods in
the application and the cited registration. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
In his brief Applicant acknowledges that the marks
differ only in their endings, -ICS versus -ICALS. However,
Applicant argues that the marks are distinguishable due to
this difference and due to the fact that the cited mark is
highly suggestive and weak. Applicant argues that
MEDICEUTICALS consists of two elements, MEDI and CEUTICAL,
and that these elements are familiar to consumers in the
marketplace. In fact, Applicant stresses the latter
argument regarding the weakness of the cited mark to the
Serial No. 77012622
4
near exclusion of the former argument regarding the
distinction between the marks. Applicant submitted copies
of several registrations for marks which include either
MEDI as a prefix or CEUTICAL as a suffix in support of his
argument. Attachments to Applicant’s Reponses of August
22, 2007 and November 7, 2008.
On the other hand, the Examining Attorney argues that
the marks are highly similar because the difference of just
a few letters in the endings is not significant. The
Examining Attorney also dismisses the importance of the
third-party registrations, and other evidence, offered to
show the weakness of the cited mark.
We find the marks highly similar. The Board has
stated, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
Serial No. 77012622
5
omitted). In this case the only difference between the
marks, MEDICEUTICALS versus MEDICEUTICS, is a minor
difference in the endings. The difference appears minor
even in a side-by-side comparison. Thus, the marks are
highly similar in appearance and sound. In re Corning
Glass Works, 229 USPQ 65, 66 (TTAB 1985). Furthermore,
both marks project the same connotation and commercial
impression, that is, the suggestion that the identified
goods are somehow of medical or pharmaceutical grade or
quality.
In finding the marks highly similar, we also reject
Applicant’s argument that the cited mark is weak. As we
noted, Applicant has made of record registrations for marks
which include MEDI as a prefix, including, MEDI-BODY BATH,
MEDICAM, MEDICALIA and MEDICLEAR, and marks which include
CEUTICAL as a suffix, including, INTRACEUTICALS,
PHYTOCEUTICALS, DERMACEUTICALS and THERMACEUTICALS. Even
though the evidence is limited in its probative value
because it does not show whether or to what extent these
marks may have been used, we readily acknowledge that these
two elements appear as a prefix or suffix in other marks
and terms. Cf. In re Max Capital Group Ltd., 93 USPQ2d
1243, 1246 (TTAB 2010). However, conspicuous by its
absence is any example of a third-party mark where MEDI and
Serial No. 77012622
6
CEUTICAL appear together, or more importantly, where the
entire mark consist of MEDI and CEUTICAL only. Applicant’s
mark likewise consists of MEDI and CEUTICS only. Again,
the difference between the suffixes in the respective
marks, CEUTICAL versus CEUTICS, is insignificant.
Accordingly, we reject Applicant’s argument that the cited
mark is weak. For completeness, we note that even marks
which are found to be weak are entitled to protection under
circumstances similar to those we find in this case. Id.
Accordingly, we conclude that the marks are highly
similar.
The Goods
As to the goods, the goods of applicant and the
registrant need not be identical to find a likelihood of
confusion under Section 2(d). They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant purchasers mistakenly
believing that the goods originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels
of trade for those goods we must consider the goods as
identified in the application and registration. See
Serial No. 77012622
7
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.”).
Applicant argues that his goods differ from the goods
identified in the cited registration, hair shampoo, because
the registrant’s goods “… are used for a singular purpose -
- to clean one’s hair.” Applicant’s Brief at 3. Applicant
asserts a contrast with his products which include “…
cosmetics, skin and nail care products sold under the
supervision of medical providers….” Id. Thus, Applicant
argues that his goods are used for different purposes than
the goods identified in the cited registration.
Applicant also argues that the channels of trade for
the respective goods differ because his goods are limited
to those sold “under the supervision of medical providers.”
Applicant also argues that registrant has sold only shampoo
for a number of years and that if registrant were to sell
additional goods, they would likely be other hair care
Serial No. 77012622
8
products. In his reply brief Applicant also argues that
the registrant’s goods are sold only through hair salons,
and therefore, that the channels of trade for the
respective goods are distinct. Applicant provided a copy
of a page from the registrant’s website; this is the
apparent basis for this statement. Attachment to
Applicant’s August 22, 2007 Response.
The Examining Attorney argues that the goods are
closely related relying on nineteen, use-based, third-party
registrations, each showing a mark registered for both the
goods identified in the application and the goods
identified in the cited registration. The Examining
Attorney also notes that the application, as filed,
included “hair shampoo” and that Applicant deleted that and
other items only after the refusal at issue here was
issued. The Examining Attorney argues further that the
trade channel restriction in the application is ambiguous
and that, even if it were not ambiguous, it fails to
distinguish Applicant’s goods from those of the registrant
because the cited registration does not limit the trade
channels.
First, we find that the goods themselves, the
registrant’s hair shampoo and the goods identified in the
application, for example, “… soaps for body care and soaps
Serial No. 77012622
9
for personal use, skin soaps; alum stones for personal use;
shaving soaps, shaving balms and lotions, after-shave balms
and lotions; deodorants for body care; non-medicated bath
salts; cosmetic preparations for body care, namely, skin
creams, skin milks, skin lotions…,” among other goods, to
be closely related. For example, hair shampoo and skin
soaps, though they arguably serve different purposes, they
serve closely related purposes, they are used together, and
they are sold through the same outlets. We reject
Applicant’s argument that the difference in purpose, hair
care versus skin care, in any way distinguishes the goods
for the purposes of Section 2(d).
Furthermore, all nineteen of the third-party
registrations the Examining Attorney provided include hair
shampoo and one or more of the items listed in the
application. Attachments to Office Action of November 20,
2008. These third-party registrations provide evidence
that the goods identified in the application and the cited
registration are the types of goods which may emanate from
the same source. In re TSI Brands Inc., 67 USPQ2d 1657,
1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
As to the trade channels, we reject out of hand
Applicant’s representation that the registrant’s goods are
Serial No. 77012622
10
sold only through hair salons. The cited registration
includes no such restriction. We are precluded from
considering extraneous evidence offered to show that the
goods identified in the cited registration are restricted
in some way not reflected in the registration. In re
Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986). We
likewise reject Applicant’s speculation regarding what
additional goods the registrant may or may not sell.
As to the trade channel “restriction” in the
application, we concur with the Examining Attorney in
finding the language ambiguous. Applicant’s identification
now ends with the wording “… all of the aforementioned
goods being under the supervision of medical providers”
following the list of goods. First, we find “medical
providers” to be ambiguous. In his reply brief, in an
attempt to explain the meaning of this restriction
Applicant states, “Regardless of whether this purchase
occurs at a beauty counter, at a medispa, or at a doctor’s
office, the purchasing conditions are highly sophisticated
and the goods are sold under intimate conditions where a
consumer consults one on one with an expert in the field.”
Reply Brief at 2. If anything this statement, as well as
the rest of Applicant’s explanation, only aggravates the
ambiguity. We have no indication as to what a “medical
Serial No. 77012622
11
provider” is. Could it include a sales person working at a
beauty counter? When we look at the identification as a
whole, it is apparent that many, if not most, of the items
listed are not typically items as to which a physician or
similar professional would ordinarily render advice at the
point of sale, for example, “… cosmetic preparations for
eye lashes; lipsticks; nail polish, nail varnish, nail care
preparations….” Furthermore, the language does not
specifically limit the outlets through which Applicant’s
goods may be sold. For example, in the absence of clearer
language, we must conclude that Applicant’s goods are sold
at beauty counters in various types of retail outlets.
In any event, even if we found the restrictions to be
meaningful, as the Examining Attorney notes, there is no
restriction in the cited registration. Consequently, we
must conclude that the registrant’s goods are sold through
all channels where “hair shampoos” are sold, which could
include retail outlets with beauty counters and locations
where “the supervision of medical providers” accompanies
the sale.
Accordingly, we conclude that the respective goods are
highly related and that those goods travel through
overlapping trade channels to the same potential
purchasers.
Serial No. 77012622
12
Conclusion
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any not
specifically discussed here, we conclude that there is a
likelihood of confusion between Applicant’s MEDICEUTICS
mark when used in connection with “perfumery products,
namely, perfumes, cologne waters, scented linen waters,
essential oils, oils for cosmetic use; soaps for body care
and soaps for personal use, skin soaps; alum stones for
personal use; shaving soaps, shaving balms and lotions,
after-shave balms and lotions; deodorants for body care;
non-medicated bath salts; cosmetic preparations for body
care, namely, skin creams, skin milks, skin lotions; make-
up, make-up removing preparations; cotton sticks for
cosmetic purposes; cosmetic preparations for eye lashes;
lipsticks; nail polish, nail varnish, nail care
preparations; beauty masks; depilatories; cosmetic sun-
tanning preparations; anti-cellulite creams; all of the
aforementioned goods being under the supervision of medical
providers” and the cited MEDICEUTICALS mark when used in
connection with “hair shampoo.”
Decision: We affirm the refusal under Trademark Act
Section 2(d).