Restoration Hardware, Inc.

Trademark Trial and Appeal Board

Feb 23, 2015

No. 85884889 (T.T.A.B. Feb. 23, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Restoration Hardware, Inc.
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Serial No. 85884889
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Michael J. McCue of Lewis and Roca LLP,
for Restoration Hardware, Inc.
David C. Reihner, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Kuhlke, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Restoration Hardware, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark RH (in standard characters) for
Medicated creams and lotions for treatment of dry skin,
International Class 5.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 0152(d), on the

1 Application Serial No. 85884889 was filed on March 25, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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ground that Applicant’s mark so resembles the registered mark RH MD, in
standard character form, for the goods listed below:
Body butter; Skin lotion; Sunscreen cream, in Class 3
Dietary supplements; Herbal supplements; Vitamin
supplements, in Class 5.
Health care services, namely, wellness programs;
Providing information about dietary supplements and
nutrition; Providing wellness services, namely, weight
loss programs offered at a wellness center, in Class 44.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Preliminary Issue
Before proceeding to the merits of the refusal, we address a procedural matter.
Pursuant to Trademark Rule 2.126(a)(1), made applicable to ex parte appeals by
Trademark Rule 2.142(b)(2), briefs must be double-spaced. Applicant’s brief was
single-spaced. Nevertheless, we exercise our discretion to consider Applicant’s brief.
II. Applicable Law
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). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

2 Registration No. 4267913, issued January 1, 2013.
Serial No. 85884889
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analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
A. The similarity or dissimilarity and nature of the goods.
Applicant is seeking to register its mark for “medicated creams and lotions for
treatment of dry skin.” The description of goods in the cited registration includes,
inter alia, body butter, skin lotion, and sunscreen cream.3 We focus our analysis on
Registrant’s goods in Class 3 (i.e., body butter, skin lotion, and sunscreen cream).
The Trademark Examining Attorney has submitted 9 use-based, third-party
registrations for products listed in both the application and the cited registration.
Third-party registrations which individually cover a number of different goods that
are based on use in commerce may have some probative value to the extent that
they serve to suggest that the listed goods are of a type which may emanate from
the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re

3 Under this du Pont factor, the Trademark Examining Attorney need not prove, and we
need not find, similarity as to each and every product listed in the description of goods of a
single class. It is sufficient for a refusal based on likelihood of confusion that relatedness is
established for any item encompassed by the identification of goods in a class in the
application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1
(TTAB 2011), judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014);
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007).
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Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
registrations are listed below:4
Mark Reg. No. Goods
MUSHATTS NO. 9 and
design
3659147 Skin lotions; medicated lotions for skin,
face, and scalp
CURECEUTICALS 3666363 Skin lotion, sun care lotions; medicated
lotions for the skin, face, and body
THE YOUNGER YOU 3119517 Skin lotion, sunscreen creams; medicated
creams and treatments for the skin and
face
CHATTEM 3897483 Sun screen preparations, skin lotions;
medicated skin creams
LOESCH 4104272 Sunscreen creams, face and body lotions;
medicated lotions for treating
dermatological conditions
KAISERKAPS 4242770 Creams and lotions for the skin; medicated
creams and lotions for the skin
QUANTUM 4252442 Non-medicated, therapeutic skin creams for
the treatment of cracked skin; medicated
skin care preparations

4353470 Skin lotion; medicated skin care
preparations, namely, creams, lotions, gels,
toners, cleaners and peels
RELIEVE. PROTECT.
HEAL.
4353475 Skin lotions; medicated lotions for skin,
medicated skin care preparations, namely,
creams, lotions, gels, toners, cleaners and
peels

Applicant did not submit any evidence or make any arguments regarding the
similarity or dissimilarity or nature of the goods.

4 We listed only the relevant goods that appear in both the application and the cited
registration. We did not include Registration No. 3334877 for the mark BITCHIN’ because
it did not include medicated creams and lotions; and we did not include Registration No.
4382913 for the mark DUALGEN because it did not include body butter, skin lotion, or
sunscreen cream.
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We find that Applicant’s “medicated creams and lotions for treatment of dry
skin” are related to Registrant’s body butter, skin lotion, and sunscreen cream.
B. Established, likely-to-continue channels of trade.
In his December 17, 2013 Office Action, the Trademark Examining Attorney
submitted advertisements from Walgreens (walgreens.com) and CVS (cvs.com)
drugstores advertising the sale of skin lotions and medicated skin lotions. Applicant
did not submit any evidence or make any arguments regarding the channels of
trade. Accordingly, we find that the channels of trade are similar.
C. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “finding of similarity as to any one factor (sight,
sound or meaning) alone ‘may be sufficient to support a holding that the marks are
confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)
(citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1987). In comparing the marks, we are mindful that “[t]he proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted). See also San Fernando Electric Mfg. Co. v. JFD
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Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem.,
972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the products
are body butter, skin lotion, and sunscreen creams and medicated creams and
lotions for the treatment of dry skin and all the goods are sold through drug stores,
such as Walgreens and CVS, the average customer is an ordinary consumer.
Applicant’s mark is RH for “medicated creams and lotions for treatment of dry
skin” and the mark in the cited registration is RH MD for “body butter, skin lotion,
sunscreen cream.”
The letters RH are the dominant elements of Registrant’s mark because the
letters MD are descriptive and Registrant disclaimed the exclusive right to use
“MD.” The letters “MD” are the abbreviation for “a licensed medical practitioner,”5
and Registrant sells its products as part of a “clinically validated therapeutic
lifestyle modification program that provides a whole body approach to wellness,
reducing the need for unnecessary medications.”6 It is well-settled that disclaimed,

5 Free Online Dictionary, Thesaurus Encylcopedia (thefreedictionary.com) derived from
THE AMERICAN HERITAGE SCIENCE DICTIONARY (2005) attached to Applicant’s
December 6, 2013 Response to Office Action.
6 Registrant’s Radiantly Healthy website (rh-md.com) attached to Applicant’s December 6,
2013 Response to Office Action.
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descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983)); In re Dixie Rests. Inc., 105 F.3d
1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
While noting that the letters RH are the dominant elements of Registrant’s
mark, we are cognizant that the similarity or dissimilarity of the marks is
determined based on the marks in their entireties and that the analysis cannot be
predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); In re National Data Corp., 224 USPQ at 751. However, 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 a consideration of the marks in their entireties. In re National Data Corp., 224
USPQ at 751.
The position of the letters RH as the first part of the mark RH MD further
reinforces the importance of RH as the dominant element of the mark. See Presto
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Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“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 Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(“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);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word).
Applicant’s mark RH and the dominant element RH of Registrant’s mark RH
MD are identical. In similar circumstances, where the registrant’s mark
incorporates an applicant’s entire mark, the Board and its primary reviewing court
have found that the marks are similar. See In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s
mark ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to
be confused with LILLI ANN for women's apparel including dresses); In re United
States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's
clothing stores and women's clothing likely to cause confusion with CREST
CAREER IMAGES for uniforms including items of women's clothing). In United
States Shoe, the Board observed that “Applicant's mark would appear to prospective
purchasers to be a shortened form of registrant's mark.” 229 USPQ at 709. See also
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Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992)
(“[C]ompanies are frequently called by shortened names, such as, Penney's for J.C.
Penney's, Sears for Sears and Roebuck (even before it officially changed its name to
Sears alone), Ward's for Montgomery Ward's, and Bloomies for Bloomingdale's.”). In
this case, consumers may shorten RH MD to RH in the mistaken belief that RH MD
is the medicated RH line of skin lotions.
Applicant makes the following argument:
[C]onsumers encountering the RH MD Mark will
recognize the MD as referring to a medical doctor. As
such, they will likely assume that the products are of
medical-grade and/or associated with a doctor or a
medical group. No such association will be made in
connection with Appellant’s RH mark, particularly when
Appellant sells primarily home furnishings such as
furniture, paint, linens, and hardware.7
As noted above, consumers encountering the RH MD mark will believe that the
products are medical grade or associated with a medical group. However, consumers
may mistakenly believe that RH MD skin lotions emanate from the same source as
RH medicated creams and lotions for treating dry skin because of the similarity of
the marks.
Further, because Applicant’s description of goods is not restricted to medicated
creams and lotions for treating dry skin sold primarily in connection with home
furnishings such as furniture, paint, linens, and hardware, we may not so restrict
the use of Applicant’s mark. We must consider the goods as they are described in
the application and registration and may not read limitations into the use of the

7 Applicant’s Brief, p. 3 [unnumbered].
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mark. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983) (“There is no specific limitation and nothing in the inherent nature of
Squirtco's mark or goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read limitations into the
registration”). Therefore, we must presume that applicant’s medicated creams and
lotions could be sold through all the normal channels of trade for those goods such
as Walgreens and CVS and not merely through Applicant’s retail stores.
Finally, Applicant’s contention that the RH in Registrant’s mark RH MD stands
for “Radiant Health” or “Radiantly Healthy” while the RH in Applicant’s mark
stands for Restoration Hardware is not relevant in this ex parte appeal.8 We are
concerned here with the mark Applicant is seeking to register and Registrant’s
mark as registered, not as displayed in the real world or with any accompanying
trade dress. See Trademark Rule 2.52 (“A drawing depicts the mark sought to be
registered.”).
[A] distinction in trade dress cannot weigh against
likelihood of confusion with respect to the registration of a
simple word mark like [RH]. The reason is that such dress
may well be changed at any time; only the word mark
itself is to be registered.
Kimberly-Clark Corp. v. H. Douglas Enters., Ltd. , 774 F.2d 1144, 227 USPQ 541,
543 (Fed. Cir. 1985). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (“it is irrelevant that Cunningham has a

8 Applicant’s Brief, p. 4 [unnumbered].
Serial No. 85884889
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particular display for his mark in commerce, and the Board was correct to ignore
those features.”); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1268 (TTAB 2011)
(“registrant's registrations are evidence of the registrant's exclusive right to use the
registered marks in commerce, without being required to include any additional
wording that may be displayed on a specimen that was submitted in connection
with obtaining one of the registrations. Likelihood of confusion is determined based
on the mark as shown in the drawing of an application and the mark(s) shown in
the cited registration(s).”). Our analysis regarding the similarity of the marks is
limited to the mark Applicant is seeking to register RH and the mark in the cited
registration RH MD.
In view of the foregoing, we find that Applicant’s mark RH is similar to
Registrant’s mark RH MD.
D. Balancing the factors.
Because the marks are similar, the goods are related, and the goods move in the
same channels of trade, we find that Applicant’s mark RH for “medicated creams
and lotions for treatment of dry skin” is likely to cause confusion with the registered
mark RH MD for, inter alia, body butter, skin lotion, and sunscreen cream.
Decision: The refusal to register Applicant’s mark RH is affirmed.