Sante Semprini Cesari and Roland Hairtrend Inc.

Trademark Trial and Appeal Board

Jan 19, 2012

No. 77870089 (T.T.A.B. Jan. 19, 2012)

Mailed:
January 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sante Semprini Cesari and Roland Hairtrend Inc.
________

Serial No. 77870089
_______

Jose Maria Arrufat Gracia of Arrufat Gracia, PLLC for Sante
Semprini Cesari and Roland Hairtrend Inc.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney).
_______

Before Quinn, Bergsman and Shaw
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sante Semprini Cesari, an individual, and Roland
Hairtrend Inc., a New Jersey corporation (hereinafter
“applicants”) filed a use-based application for the mark
UNA PHYTOLOGY RANGE and design, shown below, for “hair
bleaching preparations; hair care creams; hair care
lotions; hair gel and hair mousse; hair lacquers; hair
lotion; hair shampoos and conditioners; hair spray; hair
waving lotion; hair wax; non-medicated hair serums,” in
Class 3.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77870089
2

Applicants disclaimed the exclusive right to use the word
“Phytology.” In their August 18, 2010 response to an
Office action, applicants explained that “phytology … means
or signifies study of the plants or botany.”1 Also,
applicants provided an English translation of the word
“Una” as meaning “one.”
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicants’ mark, when used
in connection with the products listed in applicants’
description of goods, so resembles the registered marks
listed below as to be likely to cause confusion:
1. Registration No. 1826782 for the mark PHYTOLOGIE,
in typed drawing form, for “hair shampoos, hair lotions,
essential oils for the manufacture of hair shampoos and
hair lotions, hair sprays and conditioners,” in Class 3;2
and

1 See also The American Heritage Dictionary of the English
Language (4th ed. 2000) (thefreedictionary.com) attached to
applicants’ August 18, 2010 response.
2 Issued March 15, 1994; renewed.
Serial No. 77870089
3
2. Registration No. 3508941 for the mark PER UNA, in
standard character form, for a wide variety of cosmetics
and personal care products including, inter alia, shampoos,
hair conditioners, hair masks, hair serums, hair styling
gel, hair styling foam, hair styling spray, and hair dyes,
in Class 3.3 Registrant provided the translation of the
term “Per Una” as “For One.”
Preliminary Issue
Applicants submitted exhibits with their appeal brief.
The examining attorney objected to the evidence attached to
the brief pursuant to Trademark Rule 2.142(d) on the ground
that the evidence was untimely. Trademark Rule 2.142(d)
addresses the submission of evidence submitted after an
appeal is filed:
The record in the application should be
complete prior to the filing of an
appeal. The Trademark Trial and Appeal
Board will ordinarily not consider
additional evidence filed with the
Board by the appellant or by the
examiner after the appeal is filed.

The objection is sustained because the exhibits
attached to applicants’ brief are untimely and, therefore,
we have not considered them.

3 Issued September 30, 2008.
Serial No. 77870089
4
Likelihood of Confusion
Our determination of likelihood of confusion 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 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
A. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

The products listed in the application and
Registration No. 1826782 are in part identical (i.e., hair
shampoos and lotions).
The products listed in the application and
Registration No. 3508941 are in part identical (i.e., hair
shampoos, hair conditioners, hair styling gel and hair
mousse, and hair serums).
Because the goods described in the application and the
cited registrations are in part identical, we must presume
Serial No. 77870089
5
that the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn now to the du Pont 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, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987). In comparing the marks, we are mindful that
where, as here, applicants’ goods are in part identical to
Serial No. 77870089
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registrants’ goods, the degree of similarity necessary to
find likelihood of confusion need not be as great as where
there is a recognizable disparity between the goods.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real
Estate One, Inc. v. Real Estate 100 Enterprises
Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of
E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
Moreover, the test 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 overall commercial impression so that confusion as
to the source of the goods offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1835, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992). The proper focus is on
the recollection of the average customer, who retains a
general rather than a specific impression of the marks.
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). In this case, the
Serial No. 77870089
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average consumer of applicants’ products and registrants’
products are ordinary consumers.
However, as applicants correctly note, the similarity
or dissimilarity of the marks is determined based on the
marks in their entireties. 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. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic
that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion”).
On the other hand, 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 give to a particular feature
of a mark, provided the ultimate
conclusion rests on consideration of
the marks in their entireties. Indeed,
this type of analysis appears to be
unavoidable.

In re National Data Corp., 224 USPQ at 751.
1. Registration No. 1826782 for the mark PHYTOLOGIE.
Applicants’ mark UNA PHYTOLOGY RANGE and design and
the mark in the cited registration PHYTOLOGIE are similar
Serial No. 77870089
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to the extent that PHYTOLOGY and PHYTOLOGIE have identical
pronunciations, are very similar in appearance, have the
same meaning and engender the same commercial impression.
With respect to the commercial impression of the marks,
applicants’ use of the term PHYTOLOGY RANGE implies an
expansion of the PHYTOLOGIE product line and, therefore,
PHYTOLOGY RANGE is a derivative or line of PHYTOLOGIE
products.
Applicants argue that the word “Phytology” is
descriptive and, therefore, is entitled to less weight in
the comparison of the marks.4 Specifically, applicants
contend that “[c]onsumers are likely to associate the word
phytology (in English) in the applied-for mark UNA
PHYTOLOGY RANGE and Design with the natural and plant
ingredients contained in its products. … In the same
manner, consumers are likely to associate the word
phytologie in French) in the cited marks [sic] as a mere
description of ingredients and characteristics of its hair
care products.”5
We disagree. As indicated above, the word “Phytology”
means the study of plants or botany.6 In this regard, we

4 Applicants’ Brief, pp. 4 and 7-8.
5 Applicants’ Brief, p. 8.
6 See also Applicants’ Brief, p. 8.
Serial No. 77870089
9
note that the word “Phytology” does not directly describe a
quality, characteristic, feature or purpose of hair care
products. Someone who knows that the mark refers to hair
care products will not understand that the word “Phytology”
conveys information about hair care products. Cf. In re
Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002).
To the extent a consumer does associate PHYTOLOGY RANGE (or
PHYTOLOGIE) with the natural and plant ingredients
contained in the products, that consumer would have reached
that conclusion only after engaging in a multi-step
reasoning process thereby eliminating the possibility of
the words “Phytology” or “Phytologie” as being descriptive
when applied to hair care products.
To the extent that the words “Phytology” and
“Phytologie” may be considered suggestive, these
phonetically equivalent terms each convey the same
suggestion, thus, making them similar in terms of meaning
and commercial impression.
Applicants also argue that the mark UNA PHYTOLOGY
RANGE and design, in its entirety, does not visually
resemble the registered mark PHYTOLOGIE. However, the term
“Phytology Range,” although smaller than the word “Una” is
set forth distinctly below the word “Una” identifying “Una”
Serial No. 77870089
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as one product in the PHYTOLOGY RANGE line of hair care
products.

Applicants’ mark incorporates the registrant’s entire
mark. As discussed above, “Phytologie” and “Phytology” may
be suggestive terms because they do not describe a feature,
quality or characteristic of hair care products. In such
circumstances, likelihood of confusion has been found where
the entirety of one mark is incorporated within another.
See The Wella Corporation v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (“When one
incorporates the entire arbitrary mark of another into a
composite mark, inclusion in the composite mark of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion”). See also Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975) (applicant’s mark BENGAL LANCER for club soda,
quinine water and ginger ale is likely to cause confusion
with BENGAL for gin); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB
1982) (applicant’s mark EBONY DRUM for hairdressing and
Serial No. 77870089
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conditioner is likely to cause confusion with EBONY for
cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842
(TTAB 1979) (applicant’s mark HEAD START COSVETIC for
vitamins for hair conditioners and shampoo is likely to
cause confusion with HEAD START for men’s hair lotion and
after-shaving lotion).
As indicated above, the process of comparing the marks
does not rest on a side-by-side analysis or a point-by-
point comparison of the marks isolating the similarities
and differences. The focus is on the average purchasers
who do not memorize marks and “there is a tendency for
individuals to equate a new mark or experience with one
that they have long experienced without making an effort to
ascertain whether or not they are the same marks.”
Cumberland Packing Corp. v. Estee Corp., 224 USPQ 50, 52
(TTAB 1984). Therefore, it is highly unlikely that
consumers would differentiate applicants’ mark from the
registered mark.
Despite the fact that there are differences in the
marks, overall they convey the same commercial impression,
and the similarities in appearance, sound and meaning
caused by the word Phytology/Phytologie in both marks
outweigh the differences due to the design elements and
addition of the word “Una” in applicants’ mark. As
Serial No. 77870089
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discussed more fully below, we find that the word “Una” is
the dominant element in applicants’ mark. However, because
“Una” is the dominant element of applicants’ mark, this
does not mean that we can ignore the similarity between
other elements of the marks. In this regard, we find that
the similarity between the terms PHYTOLOGY RANGE and
PHYTOLOGIE outweighs the differences between the marks. In
view of the foregoing, we find that applicants’ mark UNA
PHYTOLOGY RANGE and design is similar to the mark
PHYTOLOGIE in the cited registration in terms of
appearance, sound, meaning and commercial impression.
2. Registration No. 3508941 for the mark PER UNA.
Although the mark in the application features a design
element and additional wording, applicants’ mark UNA
PHYTOLOGY RANGE and design and the mark in the cited
registration PER UNA are similar to the extent that they
share the word “Una.” With respect to applicants’ mark, we
find that the word “Una” is the dominant element in part
because it is the largest and most distinctive feature of
the mark. Thus, the primary question is whether the
difference in appearance caused by applicants’ design and
the addition of the words “Phytology Range” are sufficient
for consumers to distinguish between applicants’ mark UNA
Serial No. 77870089
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PHYTOLOGY RANGE and design and the mark in the cited
registration PER UNA.
Where, as in this case, one of the marks comprises
both words and a design, the words are normally accorded
greater weight because they would be used by purchasers to
request the goods. In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987). See also CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
(“in a composite mark comprising a design and words, the
verbal portion of the mark is the one most likely to
indicate the origin of the goods to which it is affixed”);
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395-96 (Fed. Cir. 1983); Kabushiki
Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB
1985). Accordingly, we find that the word UNA and the term
PHYTOLOGY RANGE are the dominant portions of applicants’
mark and that they are entitled to greater weight than the
design element. In any event, in this case, the design is
not so prominent as to affect or change the commercial
impression created by the words.
With respect to the word portions of applicants’ mark,
the word “Una” is more dominant than “Phytology Range”
because it is the largest and most distinctive portion of
the mark. The word “Una” appears to be the product name
Serial No. 77870089
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and “Phytology Range” is in a smaller font located below
the word “Una” making the term “Phytology Range” appear to
be informational in nature indicating that “Una” is one of
a line of products in the “Phytology Range.”
The significance of the word “Una” is reinforced by
its position as the first part of applicants’ mark. See
Presto 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, 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).
Because the dominant portion of applicants’ mark is
the word “Una” it engenders a similar commercial impression
to the registrant’s PER UNA. Registrant’s mark is a
unitary mark with the word “Per” modifying the word “Una,”
and therefore consumers would see PER UNA as one term. A
consumer who understand that PER UNA is translated into
Serial No. 77870089
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English as “For One” would also understand that “Una” is
translated into English as “One.” For a consumer who did
not know that “Una” and “Per Una” were foreign terms, the
marks would be perceived as similar arbitrary or coined
terms. In this regard, we note that the word “Per” means
“for each; for every … by means of; by; through,”7 and,
thus, “Una” and “Per Una” would have similar meanings and
convey similar commercial impressions (e.g., Una and For or
By Una). In fact, a consumer could perceive “Per Una” as
meaning “By Una” and then upon encountering applicants’
mark mistakenly believe that applicants’ UNA is associated
with the Una in PER UNA.
As discussed above, the process of comparing the marks
does not rest on a side-by-side analysis or a point-by-
point comparison of the marks isolating the similarities
and differences. The focus is on the average purchasers
who do not memorize marks and “there is a tendency for
individuals to equate a new mark or experience with one
that they have long experienced without making an effort to
ascertain whether or not they are the same marks.”
Cumberland Packing Corp. v. Estee Corp., 224 USPQ at 52.

7 The American Heritage Dictionary of the English Language
(Unabridged), p. 1437 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. 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).
Serial No. 77870089
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Therefore, it is highly unlikely that consumers would
differentiate applicants’ mark from the registered mark.
In view of the foregoing, we find that when the marks
are compared in their entireties, they are more similar
than dissimilar in terms of appearance, sound, meaning and
commercial impression.
C. Balancing the factors.
The du Pont factors require to us to consider the
factors for which evidence has been made of record in
likelihood of confusion cases. In view of the facts that
the marks are similar and the goods are in part identical
and the presumption that they move in the same channels of
trade and are sold to the same classes of consumer, we find
that applicants’ mark UNA PHYTOLOGY RANGE and design
applied to hair care products as set forth in the
application is likely to cause confusion with the mark
PHYTOLOGIE for “hair shampoos, hair lotions, essential oils
for the manufacture of hair shampoos and hair lotions, hair
sprays and conditioners,” and PER UNA for a wide variety of
cosmetics personal care products including, inter alia,
shampoos, hair conditioners, hair masks, hair serums, hair
styling gel, hair styling foam, hair styling spray, and
hair dyes.
Decision: The refusals to register are affirmed.