Skincode AGv.Skin Concept AG

Trademark Trial and Appeal Board

Dec 30, 2013

No. 91206091 (T.T.A.B. Dec. 30, 2013)

Baxley Mailed: December 30, 2013

Opposition No. 91206091

Skincode AG

v.

Skin Concept AG

Before Kuhlke, Bergsman, and Adlin,
Administrative Trademark Judges.

By the Board:

This case comes up for consideration of applicant’s
motion (filed August 28, 2013) to dismiss the opposition
under Trademark Rule 2.132(b) on the ground that the
evidence of record, i.e., the USPTO records regarding
opposer’s registration that were attached to the notice of
opposition, does not make a prima facie showing that
opposer is entitled to any relief. The motion has been
fully briefed.
Skin Concept AG (“applicant”), a Swiss corporation,
filed an application to register the mark SWISSCODE in
standard character form for “[s]oap; perfumery, essential
oils, cosmetics, hair lotions; dentifrices” in
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a Precedent
of the TTAB
Opposition No. 91206091

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International Class 3.1 Skincode AG (“opposer”), also a
Swiss corporation, opposes registration of applicant’s mark
on grounds of likelihood of confusion with, inter alia, its
previously used and registered mark SKINCODE 2 and design
in the following form, , for “soaps,
cosmetics, all adapted for use on the skin and the scalp”
in International Class 3 under Trademark Act Section
1052(d), 15 U.S.C. Section 1052(d), and dilution under
Trademark Act Section 43(c), 15 U.S.C. Section 1125(c).
Pursuant to Trademark Rule 2.122(d)(1), opposer attached to
its notice of opposition a copy of its pleaded registration
printed from the electronic database records of the USPTO
showing the current status and title of the registration.2
Opposer also based its opposition on its asserted
previous use of the mark SKINCODE for “cosmetics,
including, inter alia, skin care products.” As discussed
infra, opposer did not submit evidence supporting this
asserted basis and the opposition therefore is dismissed as
to this asserted basis.

1 Application Serial No. 79105905, filed October 10, 2011, under
Trademark Act Section 66(a), 15 U.S.C. Section 1141f.

2 Registration No. 2803025, issued January 6, 2004. The
registration does not indicate that color is claimed as a feature
of the mark and does not include a description of the mark.

Opposition No. 91206091

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Applicant in its answer denied many salient
allegations of the notice of opposition. However,
applicant admitted various allegations which bear on the
issue presented by the pending motion to dismiss.
Specifically, applicant’s admissions include paragraphs 6
(the filing date of the application for opposer’s pleaded
registration precedes applicant’s filing date) and 7
(opposer’s pleaded registration issued on January 6, 2004).
In response to paragraph 4, applicant admits “that the
records of the U.S. Trademark Office indicate that Opposer
is the owner of U.S. Reg. No. 2,803,025 for the stylized
mark SKINCODE2 for use in connection with ‘soaps,
cosmetics, all adapted for use on the skin and the scalp’
in International Class 3 (the ‘Registration’)”; that
Exhibit A of the notice of opposition “appears to be a copy
of a status report generated using the TARR web server on
July 10, 2012 for the Registration[;] and that Exhibit B
attached to the Opposition appears to be a copy of the
registration certificate issued by the U.S. Trademark
Office….”
Opposer’s testimony period closed on August 20, 2013
with opposer having submitted no additional evidence and
taken no testimony during that testimony period. On August
28, 2013, applicant filed the motion to dismiss.
Opposition No. 91206091

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In its brief on the motion to dismiss, applicant, for
purposes of the motion only, does not challenge opposer’s
standing and priority.3 However, applicant contends that
opposer’s registration does not make a prima facie showing
that opposer is entitled to any relief. In particular,
with regard to opposer’s Section 2(d) claim, applicant
notes that the marks at issue “are distinctly different,”
in that the SKIN and SWISS components of the respective
marks give them entirely different meanings and commercial
impressions. Accordingly, applicant asks that judgment be
entered against opposer under Rule 2.132(b), and that the
opposition be dismissed.
In response, opposer contends that the USPTO records
it introduced support a prima facie case of likelihood of
confusion. In particular, opposer contends, among other
things, that the marks at issue both refer to the Swiss
origin of the goods at issue in that the “i” in opposer’s
registered mark is dotted with a “square containing an
equilateral cross (or ‘plus’ sign) in the center which

3 While not raised by applicant’s motion, we note that opposer’s
proof of its pleaded registration, as indicated by the copy of
that registration which was obtained from the USPTO’s TARR
database on the filing date of the notice of opposition, and
applicant’s effective admission of opposer’s ownership of that
registration, is sufficient to establish opposer’s standing and
would remove priority as an issue at final hearing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); King Candy Co. v. Eunice King's Kitchen, Inc.,
182 USPQ 108 (CCPA 1974); Trademark Rule 2.122(d)(1).
Opposition No. 91206091

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[opposer claims] is an obvious representation of the
square-shaped flag of Switzerland,” while SWISS forms part
of applicant’s mark. Opposer further contends that the
word portions of the marks at issue are similar; and that
the marks at issue are for “topical products that are
applied to the skin.” Accordingly, opposer asks that the
Board deny applicant’s motion and allow the case to
proceed.
In reply, applicant contends that there is no evidence
supporting opposer’s assertions that the “plus sign”
element of opposer’s pleaded registered mark is “an obvious
representation of the square-shaped flag of Switzerland” or
that consumers would understand that element to connote
such a representation. Applicant further contends that
marks that comprise flags of nations are unregistrable; and
that opposer’s pleaded registration does not include a
description which states that the mark includes a
representation of the flag of Switzerland.4

4 Applicant also asserts that registration of a mark that
includes the flag of Switzerland is in contravention of 18 U.S.C.
Section 708 set forth below:
Whoever ... willfully uses as a trade mark, commercial
label, or portion thereof, or as an advertisement or
insignia for any business or organization or for any
trade or commercial purpose, the coat of arms of the
Swiss Confederation, consisting of an upright white
cross with equal arms and lines on a red ground, or
any simulation thereof, shall be fined under this
title or imprisoned not more than six months, or both.
Opposition No. 91206091

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Pursuant to Trademark Rule 2.132(b), a defendant may
file a motion for judgment directed to the sufficiency of a
plaintiff's trial evidence when the plaintiff's testimony
period has passed, and the plaintiff has offered no
evidence other than a copy or copies of USPTO records.
Such records typically include copies of a plaintiff’s
pleaded registration(s) prepared and issued by the USPTO
showing status and title thereof, or copies thereof, or a
current printout obtained from the USPTO database records
showing status and title of the registration(s). In such a
situation, the defendant may, without waiving its right to
offer evidence in the event the motion is denied, move for
dismissal on the ground that upon the law and the facts the
plaintiff has shown no right to relief. See TBMP Section

However, the protection afforded by this provision is
limited to “the coat of arms of the Swiss Confederation”
and does not extend to representations of the Swiss flag.
The Swiss coat of arms and the Swiss flag are
distinguishable in that the Swiss coat of arms consists of
a white equilateral cross displayed upright on a red
triangular shield, while the Swiss flag consists of a white
equilateral cross displayed upright on a red square. TMEP
Section 1205.01(d) (October 2013) (citing Swiss Fed. Inst.
of Intellectual Prop., Frequently Asked Questions –
Legislative Amendment “Swissness,”
https://www.ige.ch/en/service/frequently-asked-
questions/legislative-amendment-swissness/a-swiss-cross-
and-the-swiss-coat-of-arms.html (accessed Aug. 15, 2012);
Britannica.com, Switzerland, flag of,
http://www.britannica.com/EBchecked/topic/1355532/Switzerla
nd-flag-of/ (accessed Aug. 15, 2012); Cent. Intelligence
Agency, The World Factbook, Switzerland,
https://www.cia.gov/library/publications/the-world-
factbook/flags/flagtemplate_sz.html (accessed Aug. 15,
2012)).
Opposition No. 91206091

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534 (3d ed. rev.2 2013). In deciding a Rule 2.132(b)
motion, the Board may either render judgment against the
plaintiff and dismiss the case, or decline to render
judgment until all of the evidence is in the record and
then decide the case on its merits. The purpose of the
motion under Rule 2.132(b) is to save the defendant the
time and expense of continuing with the trial in those
cases where plaintiff, during its testimony period, has
offered no evidence other than copies of USPTO records, and
those records do not set forth a prima facie case.
The question we must resolve is whether opposer’s
registration is sufficient evidence to establish a prima
facie case of likelihood of confusion such that the burden
shifts to applicant to present evidence to the contrary.
If so, then remaining trial dates shall be reset.
A 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Therefore, our assessment of
whether opposer has made a prima facie case for likelihood
of confusion will consider the same factors. In any
Opposition No. 91206091

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likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods. 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.”). In this case, we find the pleaded and proven
registration is sufficient to support a prima facie case of
likelihood of confusion based on these two factors.
The goods at issue are legally identical in that both
marks are for “soap[s]” and “cosmetics.” Although the
goods in opposer’s registration are limited to “soaps [and]
cosmetics, all adapted for use on the skin and the scalp,”
applicant’s identified goods contain no such limitation.
Accordingly, the Board must presume that applicant’s goods
encompass all goods of the type identified, including
“soaps [and] cosmetics, all adapted for use on the skin and
the scalp,” and that they are or will be sold in all normal
channels of trade and to all of the usual customers for
such goods. Octocom Sys. Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Although
applicant has identified additional goods in its involved
Opposition No. 91206091

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application, likelihood of confusion must be found if there
is likely to be confusion with respect to any item that
comes within the identification of goods in the
application. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
As to the similarity or dissimilarity of the marks, we
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. In re E. I.
du Pont De Nemours & Co., supra 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); see also Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (“We agree with the Board that
these distinct commercial impressions outweigh the
similarities in sound and appearance”). Because some of
the goods are legally identical, the degree of similarity
of the marks necessary to find likelihood of confusion need
not be as great as where there are recognizable differences
between the goods. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
Opposition No. 91206091

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1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products
Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
The word portions of the marks at issue are similar in
appearance and commercial impression in that they both
include two-syllable words that begin with the letter S,
have soft “I” vowel sounds in the first syllable, and
include CODE as the second syllable. Moreover, in
opposer’s mark, the word portion, rather than the design
elements, is the dominant element in creating the
commercial impression of that mark, because it is most
likely to be impressed upon purchasers’ memories and to be
used in calling for the goods. See Herbko International,
Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375
(Fed. Cir. 2002) (words are dominant portion of mark); In
re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); Ceccato v. Manifatura Lane Gaetano Marzetto & Figli
S.p.A., 32 USPQ2d 1192 (TTAB 1994) (literal portion of mark
makes greater and long lasting impression). In addition,
applicant’s involved mark is in standard character form and
is therefore “not limited to the mark depicted in any
special form.” Phillips Petroleum v. C.J. Webb, 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971). Accordingly, we must
consider all manners in which the SWISSCODE mark could be
depicted, including in the stylized font shown in opposer’s
Opposition No. 91206091

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pleaded registration. See Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258 (Fed.
Cir. 2011).
Finally, while the mark in opposer’s registration does
not include a color claim, the cross design element in the
letter “I” arguably could – though we do not now so rule –
connote or suggest Swiss origin, the same connotation
engendered by applicant’s SWISSCODE mark.5
In addition to finding that it is premature to make a
final ruling on connotation of the marks, we also find it
premature to decide whether the suffix CODE is or is not
the dominant element in the marks.
In view of the actual and presumptive similarities of
the marks at issue, and the partially identical goods, we
find that opposer has at least made a prima facie case of
likelihood of confusion with regard to the pleaded
registered mark that dismissal of the opposition is
therefore unwarranted. Compare Merker Counter Co., Inc. v.
Central Counter Co., 310 F.2d 746, 135 USPQ 433, 434-35

5 To the extent applicant’s argument regarding the possible
connotation of the Swiss flag implicates the propriety of the
registration, such argument is an impermissible collateral
attack. See Trademark Rule 2.106(b)(2) and TBMP Section 313. To
the extent applicant’s argument is merely that we may not
consider such connotation, it is unavailing. See TMEP Section
1204.01(b). We do not reach the issue here, but may yet find
that opposer’s mark includes a “Swiss” connotation, without
finding the mark in violation of Section 2(b).
Opposition No. 91206091

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(CCPA 1962) (Rule 2.132(b) motion denied on Section 2(d)
claim alleging likelihood of confusion beween MEL-O-TOP and
MELOFLEX used on identical goods), with Syntex (U.S.A.)
Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1880 (TTAB
1990) (Rule 2.132(b) motion granted where marks not
identical and the relationship, if any, between the
parties' goods not apparent from the face of pleaded
registration).
However, opposer’s Section 2(d) claim is dismissed
with prejudice to the extent that it is based on opposer’s
asserted but unproven common law rights in the pleaded
SKINCODE mark. Likewise, in view of opposer’s failure to
submit any evidence of the fame of its pleaded SKINCODE 2
and design mark, opposer’s pleaded dilution claim is
dismissed with prejudice. See Toro Co. v. Torohead, Inc.,
61 USPQ2d 1164 (TTAB 2001).
The motion to dismiss under Trademark Rule 2.132(b)
otherwise is denied. Of course, the prima facie case of
likelihood of confusion established by opposer’s
registration of record is subject to introduction of
countervailing evidence by applicant during its testimony
Opposition No. 91206091

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period inasmuch as the burden of producing evidence to the
contrary has now shifted to applicant.6
Proceedings herein are resumed. Remaining dates are
reset as follows:
Defendant's Pretrial Disclosures Due 1/16/2014
Defendant's 30-day Trial Period Ends 3/2/2014
Plaintiff's Rebuttal Disclosures Due 3/17/2014
Plaintiff's 15-day Rebuttal Period Ends 4/16/2014

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark
Rule 2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
If either of the parties or their attorneys should
have a change of address, the Board should be so informed
promptly.

6 Opposer may not make of record during its rebuttal testimony
period evidence that should have been part of its case in chief;
in the event that applicant submits evidence during its trial
period, any rebuttal evidence submitted by opposer must be
confined to that which denies, explains or discredits applicant's
case. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629
(TTAB 2007); The Ritz Hotel Limited v. Ritz Closet Seat Corp., 17
USPQ2d 1466 (TTAB 1990).