87705056 (T.T.A.B. Aug. 23, 2019)

Sanusi Umar

Trademark Trial and Appeal BoardAug 23, 2019

87705056 (T.T.A.B. Aug. 23, 2019)

Mailed: August 23, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Sanusi Umar ———— Serial No. 87705056 ———— Michael J. O’Brien of The Law Office of Michael O’Brien, for Sanusi Umar. Doritt Carroll, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. ———— Before Bergsman, Pologeorgis, and Dunn, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Sanusi Umar (“Applicant”) seeks registration on the Principal Register of the mark DR. U GRO (in standard characters) for “Hair treatments for cosmetic purposes; Hair conditioners; Hair moisturizers; Hair nourishers,” as amended, in International Class 3.1 1 Application Serial No. 87705056, filed on December 1, 2017, based on use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming April 11, 2017 as both the date of first use and the date of first use in commerce. The application includes the following consent statement: The name, portrait, and signature shown in the mark identifies Dr. Sanusi Umar, whose consent to register is made of record. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 87705056 2 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark YOU GROW (in standard characters; GROW disclaimed) registered on the Principal Register for “non-medicated hair care preparations” in International Class 3.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. The appeal is fully briefed. We affirm the refusal to register.3 I. Preliminary Matter – Evidentiary Objection We first turn to an evidentiary objection lodged by the Examining Attorney regarding evidence presented by Applicant for the first time with his appeal brief.4 Specifically, the Examining Attorney objects to the inclusion of a copy of a European patent attached as an exhibit to Applicant’s brief, purportedly submitted to support Applicant’s argument that the definition of the phrase “hair care preparation” set forth in the identification of goods in the cited mark should be limited to a preparation that assists in hair growth.5 2 Registration No. 3347302, issued on December 4, 2007; renewed. 3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to the docket and electronic file database for the involved application. All citations to the TSDR database are to the downloadable .PDF version of the documents. 4 Examining Attorney’s Brief, p. 6, n.6, 8 TTABVUE 6. 5 Id. Serial No. 87705056 3 It is well-settled that the record in an ex parte proceeding should be complete prior to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits or other evidentiary material that are attached to or included with a brief but not made of record during examination are untimely, and will not be considered. See In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 1203.02(e) and 1207.01 (2019). To the extent Applicant wished to introduce additional evidence after his appeal had been filed, Applicant should have filed a written request with the Board to suspend the appeal and remand the application for further examination pursuant to Trademark Rule 2.142(d). Applicant did not do so. Accordingly, the Examining Attorney’s evidentiary objection is sustained, and we give the European patent attached as an exhibit to Applicant’s appeal brief no further consideration in our analysis. II. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all 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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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, 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.”). Serial No. 87705056 4 A. Similarity of the Goods We initially turn to the comparison of the goods at issue, the second DuPont factor. In making our determination regarding the relatedness of the goods, we must look to the goods as identified in Applicant’s application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs. 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.”)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s identified goods are “Hair treatments for cosmetic purposes; Hair conditioners; Hair moisturizers; Hair nourishers.” The goods identified in the cited registration are “non-medicated hair care preparations.” The Examining Attorney submitted evidence defining the phrase “hair care preparations” as follows: Hair grooming, cleansing, and modifying products meant for topical application to the hair” and including “sprays, bleaches, dyes, conditioners, rinses, shampoos, [and] nutrient lotions;6 and “Hair care preparations” listing shampoos, conditioners, and “stimulating shampoo for thinning hair” among other such goods.7 6 www.reference.med/files, April 26, 2018 Final Office Action, TSDR pp. 14-15. 7 https://connect.naturalproductsexpo.com, Id. at TSDR pp. 16-19. Serial No. 87705056 5 Based on the foregoing definitions, the broadly worded “non-medicated hair care preparations” identified in the cited registration encompasses Applicant’s more narrowly defined hair care products set forth in his application. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). As such, the parties’ respective goods are identical in part. Applicant argues, however, that the goods are unrelated because his goods are prescribed by a physician while Registrant’s goods may be sold over the counter.8 Applicant’s argument is unpersuasive. As noted above, our analysis under the second DuPont factor is limited to the goods as identified in Applicant’s application and the cited registration, neither of which is limited to products that are solely prescribed by a physician. Applicant also argues that the goods are not related based on a definition of the phrase “hair care preparations” set forth in a European patent he submitted with his appeal brief, which purportedly defines the phrase as “a hair regrowth agent, a hair restorer or an agent for preventing hair loss.”9 Because we have not considered the European patent for the reasons explained above, Applicant’s argument is unavailing. Because we have found that the parties’ respective goods are identical in part, the second DuPont factor strongly favors a finding of likelihood of confusion. 8 Applicant’s Appeal Brief, pp. 17-18, 6 TTABVUE 18-19. 9 Id. at pp. 18-19, 6 TTABVIE 19-20. Serial No. 87705056 6 B. Similarity of Trade Channels and Classes of Purchasers Next we consider established, likely-to-continue channels of trade, the third DuPont factor. Because the identifications of Applicant’s goods and Registrant’s goods are identical in part and have no restrictions as to channels of trade or classes of customers, it is presumed that the trade channels and classes of purchasers are the same for these identical in part goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158 (TTAB 2018). Thus, the third DuPont factor also weighs in favor of finding a likelihood of confusion. C. Strength of the Cited YOU GROW mark The fifth DuPont factor, the fame of the prior mark, and the sixth DuPont factor, the number and nature of similar marks in use for similar goods, DuPont, 177 USPQ at 567, may be considered in tandem to determine the strength of the cited mark and the scope of protection to which it is entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).10 “In determining strength of a mark, 10 The Federal Circuit has held that “‘[w]hile dilution fame is an either/or proposition—fame either does or does not exist—likelihood of confusion fame varies along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (internal quotation omitted)). Serial No. 87705056 7 we consider both inherent strength, based on the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery, 125 USPQ2d at 1345 (citing Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”). In an ex parte appeal such as this, the owner of the cited registration is not a party, and the Examining Attorney is under no obligation to demonstrate the exposure or recognition of the cited mark in the marketplace. In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, “in an ex parte analysis of the DuPont factors for determining likelihood of confusion …, the ‘fame of the mark’ [fifth] factor is normally treated as neutral when no evidence as to fame has been provided.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(d)(ix) (Oct. 2018). Thus, because there is no evidence of record regarding the fame of the cited mark, the fifth DuPont factor is neutral. The sixth DuPont factor requires us to consider the number and nature of similar marks in use on similar services. DuPont, 177 USPQ at 567; Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Third-party registrations and use of similar marks can bear on the strength or weakness of a registrant’s mark in two ways: commercially and conceptually. First, if a mark, or an element of a mark, is used extensively in commerce by a number of third parties, that could undermine its commercial strength, as the consuming public Serial No. 87705056 8 may have become familiar with a multiplicity of the same or similar marks, and can distinguish them based on minor differences. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “Evidence of third- party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., 73 USPQ2d at 1693, quoted in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “The weaker [a registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674. Second, evidence that a mark, or an element of a mark, is commonly adopted by many different registrants may indicate that the common element has some non- source identifying significance that undermines its conceptual strength as an indicator of a single source. Jack Wolfskin, 116 USPQ2d at 1136 (“[E]vidence of third- party registrations is relevant to ‘show the sense in which a mark is used in ordinary parlance,’ … that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak’”) (quoting Juice Generation, 115 USPQ2d at 1674 (quoting 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th ed. 2015))). Serial No. 87705056 9 Applicant contends that the cited mark YOU GROW comprises such weak, commonly-used elements that consumers will look to the other features in Applicant’s mark to differentiate the marks in appearance, sound, meaning and commercial impression. Specifically, Applicant maintains that the designations YOU and GROW are diluted when used in association with goods similar to those identified in the cited registration. To demonstrate such weakness, Applicant submitted active, use-based third-party registrations for marks consisting of or containing the terms YOU or GROW or their phonetic equivalents, as used in connection with goods similar to those identified in the cited registration.11 The third-party registrations are identified below:12 11 March 20, 2018 Response to Office Action, TSDR pp. 47-52; November 23, 2018 Request for Reconsideration, TSDR pp. 13-37. 12 Some of the third-party registrations submitted by Applicant are for goods far removed from the goods at issue in this appeal. For example: (Reg. No. 4088504) for the mark FACT YOU CAN FEEL GOOD ABOUT for “carpet and upholstery cleaners” and (Reg. No. 4318800) for the mark I LOOK GOOD ON YOU for “Indoor tanning products, namely, non-medicated skin tan darkening lotions and skin moisturizers As such, these third-party registrations have little, if any, probative value in our analysis. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are far removed from the goods at issue). Additionally, at least one third-party registration does not even incorporate either the term YOU or GROW, i.e., (Reg. No. 4931275) for the mark YOUTHBOMB for various cosmetic products. This third-party registration also has no probative value in our analysis. Finally, Applicant also submitted a canceled third-party registration for the mark TOTALLY YOU for skin care products, as well as registrations based on foreign registrations issued under Section 44(e), i.e., Registration Nos. 5149115 and 5389670 for the marks YOU ARE BELLISSIMA and Y-U WHY YOU, respectively. Canceled registrations have no probative value. See In Re Ginc UK Limited, 90 USPQ2d 1472, 1480 (TTAB 2007) (A cancelled or expired registration has no probative value other than to show that it once issued and it is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act.). Similarly, registrations issued under Section 44(e) of the Trademark Act have little to no probative value since they do not demonstrate exposure of the marks to U.S. consumers through use in commerce. See In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Serial No. 87705056 10 Mark Reg. No. Relevant Goods GORGEOUS YOU 4010321 Hair products, namely, hair shampoo, hair conditioner and hair styling preparations. CRAFTING A BETTER YOU 4755362 Beard moisturizers, beard lotions, beard washes. YOU PRO 3497214 Non-medicated hair care preparations YOU & I 4745779 Hair bleach, hair decolorants, hair dye, hair styling lotion, hair styling gel and hair styling mousse. YOU GLOSS 3298971 Non-medicated hair care preparations. YOU CONTROL 3298970 Non-medicated hair care preparations. YOU STRAIGHT 3994785 Non-medicated hair care preparations. YOU FULL OF BEAUTY 5216120 Hair lotion, hair gels. YOU SMOOTH 3490202 Non-medicated hair care preparations. GROW YOUR HAIR CONFIDENCE 5453360 Non-medicated hair care preparations for cosmetic purposes. GROW GORGEOUS 54388654 Hair care products, namely, non-medicated hair treatments for cosmetic purposes, non- medicated scalp serums, shampoos, conditioners, hair styling preparations, and hair oils. 5159133 Various hair care preparations. WAY TO GROW 4223186 Hair care products, namely, shampoo and conditioner. Serial No. 87705056 11 Mark Reg. No. Relevant Goods GROW-LUXE 4051768 Chemical ingredients being a feature of cosmetic hair filling powders for covering bald and thinning spots on the scalp. GO PRO GRO 4538751 Hair care preparations; hair styling gels. “SURE GRO” 3222026 Hair conditioners. 3029116 Hair care preparations, namely, hair moisturizing lotion and scalp moisturizer. 3589854 Hair care preparations; hair lotion, hair oils, shampoos. DOO GRO 2010037 Hair care preparations. On the whole, we note, none of the registered third-party marks uses both YOU and GROW; and none use the two terms together in the phrase YOU GROW, as the cited registration does. Even though GROW is disclaimed as descriptive of Registrant’s hair care products, it still contributes to the overall commercial impression created by the cited mark. See In re Inn at St. John's, 126 USPQ2d at Serial No. 87705056 12 1748 (citing Juice Generation, 115 USPQ2d at 1676 (Board paid insufficient heed to the word JUICE in mark for juice bar services)). Although it is fair to consider the relative strength of a mark’s component parts, we must ultimately consider marks in their entireties. As the Federal Circuit put it: Finally, the Board may “state that, for rational reasons, more or less weight has been given to a particular feature of the mark.” Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357 [56 USPQ2d 1351] (Fed. Cir. 2000). Even so, the touchstone of this factor is consideration of the marks in total. Id.; see also Juice Generation, Inc. v. GS Enters. LLC ... [115 USPQ2d 1671] ... (explaining that this factor “merely requires heeding the common-sense fact that the message of a whole phrase may well not be adequately captured by a dissection and recombination”). Jack Wolfskin, 116 USPQ2d at 1134. As noted above, none of the third-party registered marks submitted by Applicant include both the terms YOU and GROW; and none use the two terms together in the phrase YOU GROW, as the cited mark does. As such, Applicant’s evidence does not demonstrate that the cited mark, as a whole, is weak and entitled only to a narrow scope of protection. Rather, we accord the cited YOU GROW mark, in its entirety, the normal scope of protection to which suggestive marks are entitled. 15 U.S.C. § 1057(b). We add that even if we had found the scope of the cited mark to be somewhat narrowed based on Applicant’s evidence, it would not change the result, as even weak marks are entitled to protection against registration of similar marks for identical or identical in part goods, as is the case here. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974); see also In re i.am.symbolic, 127 USPQ2d 1627, 1636 n. 13 (TTAB 2018). Consequently, the sixth DuPont factor is neutral. Serial No. 87705056 13 D. Similarity of the Marks We finally consider the first DuPont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imps., 73 USPQ2d at 1691. “The 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.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)) (internal quotation marks omitted). Applicant’s mark is DR. U GRO in standard characters. The cited mark is YOU GROW in standard characters. Here, the marks are similar in sound to the extent that Applicant has incorporated the phonetic equivalent of the entirety of the cited mark as part of his mark. While there is no explicit rule that we must find that the marks are similar where Applicant’s mark incorporates Registrant’s entire mark, the fact that Registrant’s mark is subsumed by Applicant’s mark increases the similarity between the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co., v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (finding BENGAL for gin and BENGAL LANCER and design confusingly similar); In re Riddle, 225 USPQ 650 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE and design for automotive service stations held likely to be confused with ACCUTUNE for automotive testing Serial No. 87705056 14 equipment). We acknowledge that the presence of “DR.” as the first term in Applicant’s mark differentiates it visually and aurally from the cited mark. This point of distinction, however, does not significantly diminish the strong similarities in connotation and commercial engendered by these two marks due to their shared use of the phrase YOU GROW or its phonetic equivalent, U GRO. As a result, consumers encountering DR. U GRO and YOU GROW could mistakenly believe the latter is a shortened version of the applied-for mark used to identify hair care products emanating from a common source. Cf. In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811 , 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (“the users of language have a universal habit of shortening full names—from haste or laziness or just economy of words”)). This is particularly the case because, “[w]hen marks would appear on virtually identical ... [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); see also ECI Division of E-Systems, Inc. v. Environmental Comm’cns. Inc., 207 USPQ 443, 449 (TTAB 1980). Applicant argues that confusion is unlikely because Applicant owns a family of U- formative marks which makes its applied-for DR. U GRO mark a strong indicator of source.13 Applicant’s argument is unavailing. The family of marks doctrine is 13 Applicant’s March 20, 2018 Response to Office Action, TSDR p. 7. Serial No. 87705056 15 unavailable to applicants seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; the focus is on the mark an applicant is seeking to register and not on any other marks the applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing In re Lar Mor Int'l, Inc., 221 USPQ 180, 183 (TTAB 1983)); In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965). In further support his contention that confusion is not likely, Applicant maintains that there are various marks that coexist on the register owned by different parties for similar goods where one includes the designation “DR.,” while the other does not.14 Specifically, Applicant submitted copies of the registered marks DR. MIRACLE’S for “hair care and hair treatment preparations, namely, hair shampoo, hair conditioner, hair rinses, hair oils, hair gels, and hair relaxers” and MIRACLE for “soaps, shampoos, bath and shower foam … .”15 Applicant also submitted copies of the registered marks DR. BOTANICALS for, among other things, “hair care and body care preparations, namely, washes, lotions, creams, concealers, moisturizers, oils, serums, emulsions, masks, scrubs, cosmetics, cleansers, cleansing milks…” and BOTANICAL BALANCE for, inter alia, “hair care preparations.”16 These pairs of registrations do not aid Applicant. We initially note that the when comparing the marks DR. MIRACLE’S and MIRACLE, the difference between the two marks is not merely the addition of the term “DR.,” but also involves the 14 Applicant’s Appeal Brief, p. 15, 6 TTABVUE 16. 15 Applicant’s March 20, 2018 Response to Office Action, TSDR pp. 60-61. 16 Id., TSDR pp. 56-57. Serial No. 87705056 16 conversion of “miracle” to the possessive form “miracle’s.” Similarly, the differences between DR. BOTANICALS and BOTANTICAL BALANCE is not the mere addition of the term DR. in the former mark. These two marks also differ in the light of the inclusion of the term BALANCE in the latter mark. Even assuming arguendo that registrations coexist on the register that are owned by different registrants for similar or identical goods where only the term DR. is added to an already registered mark, this would not necessarily obviate a likelihood of confusion under the circumstances of this particular case. “While we recognize that ‘consistency is highly desirable,’ consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007)). We “must assess each mark on its own facts and record.” Id. In this case, we must consider Applicant’s and Registrant’s marks in their entireties. Thus, we have taken into account all of the differences in appearance, sound, meaning and commercial impression between them. We nonetheless find that despite these differences, given the similarities between the marks due to the shared phrase YOU GROW or the phonetic equivalent thereto, the marks are similar in appearance, pronunciation, and connotation and engender very similar overall commercial impressions. This especially holds true since the goods at issue are identical in part. Serial No. 87705056 17 Accordingly, the first DuPont factor favors a finding of likelihood of confusion. III. Conclusion We have considered all of the arguments and evidence of record and all relevant DuPont factors. We find that Applicant’s and Registrant’s marks, taken in their entireties, are similar; that the third-party evidence does not appreciably diminish the strength of the cited registered mark as a whole; and that Applicant’s and Registrant’s identified services are identical in part, and therefore are presumed to travel through the same channels of trade to the same classes of customers. For the above reasons, we conclude that Applicant’s subject mark, as used in connection with the goods identified in the involved application, so resembles the cited registered mark as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s DR. U GRO mark under Section 2(d) of the Trademark Act is affirmed.