No. 79175433 (T.T.A.B. Mar. 3, 2017)

Soliance

Trademark Trial and Appeal BoardMar 3, 2017

No. 79175433 (T.T.A.B. Mar. 3, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: March 3, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Soliance _____ Serial No. 79175433 _____ Michael G. Frey of Wood Herron & Evans LLP, for Soliance. Aaron Rosenthal,1 Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Cataldo, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Soliance (“Applicant”) seeks registration on the Principal Register of the mark PRIMALHYAL (in standard characters) for the following goods, as amended: Chemical products for use in the manufacture of cosmetics, namely, raw materials as chemical additives or active chemical ingredients for cosmetic purposes, for anti-aging, moisturizing, skin complexion, lightening, protection, 1 The involved application was reassigned to the named Examining Attorney for preparation of the appeal brief. Serial No. 79175433 - 2 - soothing, functional agent, firming and plumping purposes in International Class 1.2 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based upon a likelihood of confusion with Registration No. 3087638 for the mark PRIMAL (in standard characters) for Chemicals for use in the manufacture of paints, coatings and finishes in International Class 1.3 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. 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., 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 and/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 2 Application Serial No. 79175433 was filed on August 28, 2015, seeking an extension of protection under Trademark Act Section 66(a), 15 U.S.C § 1141f(a), based upon Registration No. 1271516, issued by the International Bureau on August 28, 2015. “The wording ‘PRIMALHYAL’ has no meaning in a foreign language.” 3 Issued May 2, 2006. Section 8 affidavit accepted; Section 15 affidavit acknowledge. First renewal. Serial No. 79175433 - 3 - 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. Similarity and Dissimilarity of the Marks. We turn first 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. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (quoting In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). In comparing the marks, we are mindful that 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 their overall commercial impression so that confusion as to the source of the goods or services offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also San Fernando Elec. Mfg. Co. v. JFD Elec’s. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rest’s. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92- 1086 (Fed. Cir. June 5, 1992). Serial No. 79175433 - 4 - The mark in the cited registration is PRIMAL and the mark in the involved application is PRIMALHYAL. In comparing Applicant’s mark and Registrant’s mark, we first note that Applicant has incorporated the registered mark, PRIMAL, in its entirety. In cases such as this, a likelihood of confusion has frequently been found. “When one incorporates the entire arbitrary mark of another into a composite mark, the inclusion of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion. [Internal citations omitted]. An inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar the mark CONCEPT). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer soldier design is similar to the mark BENGAL); In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar to the mark E). Thus, the importance of Applicant’s incorporation of the registered mark depends greatly on the degree of suggestiveness of that mark as well as elements of the marks that are not shared. In this regard, there is no evidence to indicate that PRIMAL or any similar mark is used by third parties in relation to the goods identified in the involved application or cited registration Similarly, there is no evidence that PRIMAL, defined as “first; original; primeval; of first importance; fundamental,”4 has 4 Dictionary.com based upon The Random House Dictionary (2017). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed Serial No. 79175433 - 5 - any meaning in connection with the recited goods in the subject application and cited registration. Nor does Applicant argue that PRIMAL has any such meaning. Rather, Applicant argues that the “HYAL element in Applicant’s mark is … every bit as distinctive and significant [as] the PRIMAL element of the mark… .”5 In the absence of any evidence of a suggestive or descriptive significance of the term PRIMAL or use thereof by third parties, the fact that Applicant has incorporated the registered mark increases the level of similarity between the marks. Turning to the term “HYAL” in Applicant’s PRIMALHYAL mark, the Examining Attorney argues that In the cosmetics industry, producers of chemicals and chemical ingredients for manufacturers of cosmetics commonly use the term “HYAL” to describe and market chemical ingredients containing hyaluronic acid to cosmetic manufacturers. Thus, the evidence establishes that consumers of the goods at issue are likely to perceive “HYAL” as merely describing the ingredients or nature of the chemicals, not as an indication that the applied-for and registered goods originate from different commercial entities.6 In support of this contention, the Examining Attorney has introduced into the record the following definition of “HYAL” – glass, glassy, hyaline ,7 and “hyaluronic acid” – “a viscous glycosaminoglycan chiefly of the matrix of tissues that occurs especially in the vitreous humor, umbilical cord, synovial fluid, and loose format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014). 5 6 TTABVUE 15. 6 8 TTABVUE 9. 7 June 14, 2016 final Office action at 7-12. Definition from merriam-webster.com. Serial No. 79175433 - 6 - connective tissue and serves especially as a structural element and lubricant.”8 The Examining Attorney further made of record evidence from third-party commercial Internet websites showing use of the term “HYAL” in various marks identifying skin care and cosmetic products containing hyaluronic acid.9 The following examples are illustrative: Jarchem.com 8 Id. at 13-20. Definition from merriam-webster.com. 9 August 19, 2016 Office action denying Applicant’s request for reconsideration, Exhibit B at 6-16. Serial No. 79175433 - 7 - Sederma.com The Examining Attorney also made of record a screenshot from Applicant’s Internet website showing that its goods under the mark contain hyaluronic acid as an active ingredient:10 10 Id. at 14. Serial No. 79175433 - 8 - Soliance.com. Applicant, for its part, argues that Instead of describing the goods, the presence of the element HYAL primarily serves to suggest or convey a sense of glassiness, or sheen – in essence, a sense of luster which is a desirable outcome from the use of certain cosmetics. The use of the HYAL element may also suggest the presence of hyaluronic acid, but it hardly equates with describing the goods or expressly naming one of the ingredients of the goods.11 Applicant introduced into the record the results of its search of “HYAL” on acronymfinder.com indicating “your abbreviation search returned 0 meanings.”12 11 6 TTABVUE 14. 12 Applicant’s August 18, 2016 request for reconsideration at 11-13. Serial No. 79175433 - 9 - Based upon the evidence of record, we find that the term “HYAL” in Applicant’s mark suggests hyaluronic acid, an ingredient in Applicant’s goods and related cosmetics and chemicals used in cosmetics, and a sheen or luster of the skin imparted thereby. Applicant’s PRIMALHYAL mark thus includes the arbitrary term PRIMAL, which comprises the mark in the cited registration, and the suggestive term “HYAL.” We thus find that the term PRIMAL is the dominant element therein. While the additional term “HYAL” is present, the suggestive nature of this term makes it subordinate to PRIMAL. It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, 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., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Furthermore, we note that PRIMAL is also the first word in Applicant’s PRIMALHYAL mark. Hercules Inc. v. National Starch and Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) (“considering the marks NATROL and NATROSOL in their entireties, the clearly dominant aspect of both marks is that the first four letters and the final two are the same.”); Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“…[it is] a matter of some importance since 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 Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strong Serial No. 79175433 - 10 - distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of ROYALE.”). Consumers are also often known to use shortened forms of names, and it is possible that Applicant’s goods will be referred to as PRIMAL. Cf. In re Abcor Development 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”). Thus, the dominant portion of Applicant’s mark is identical to the mark in the cited registration, resulting in visual and aural similarity between them. The marks also share a similar connotation based on the arbitrary meaning of the word PRIMAL: “first; original; primeval; of first importance; fundamental.”13 Recognizing the obvious differences between the marks, we find that consumers viewing Applicant’s PRIMALHYAL mark would believe that Registrant established this mark to denote chemicals used for cosmetics, but nonetheless pointing to the same source as its PRIMAL mark. We find that the difference between the marks resulting from the addition of the suggestive term “HYAL” to Applicant’s mark is outweighed by the presence of the word PRIMAL, which comprises the entirety of the registered mark, as the dominant element thereof. Considered in their entireties, we find that the marks make convey overall commercial impressions. Relationship of the Goods. 13 Dictionary.com based upon The Random House Dictionary (2017). Serial No. 79175433 - 11 - We turn to the du Pont factor involving the similarity or dissimilarity of Applicant’s goods and Registrant’s goods. It is settled that in making our determination, we must look to the goods as identified in the application vis-à-vis those recited in the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On- line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). The issue here is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In this case, the goods in the cited registration are identified as “chemicals for use in the manufacture of paints, coatings and finishes.” Applicant’s goods are identified as Chemical products for use in the manufacture of cosmetics, namely, raw materials as chemical additives or active chemical ingredients for cosmetic purposes, for anti-aging, moisturizing, skin complexion, Serial No. 79175433 - 12 - lightening, protection, soothing, functional agent, firming and plumping purposes. In support of his position that the goods at issue are related, the Examining Attorney has made of record screenshots from commercial Internet websites, of which the following are illustrative to show third parties as a single source of both Applicant’s goods and Registrant’s goods:14 14 December 4, 2015 first Office action Exhibit B at 9-46; June 14, 2016 final Office action Exhibit D at 46-99. Serial No. 79175433 - 13 - (coatex.com). Serial No. 79175433 - 14 - (coatex.com). Serial No. 79175433 - 15 - (dow.com). Serial No. 79175433 - 16 - (dow.com). (dow.com) Serial No. 79175433 - 17 - (nagode.com). Serial No. 79175433 - 18 - (nagode.com). These websites demonstrate that certain third parties are the source of both Applicant’s type of goods and Registrant’s type of goods. As further evidence that Applicant’s goods are related to those of Registrant, the Examining Attorney has submitted use-based, third-party registrations.15 Among 15 June 14, 2016 final Office action, Exhibit C at 24-45. Serial No. 79175433 - 19 - these, we note that the following registrations list, in their identifications, goods related to Registrant’s goods and Applicant’s goods: Reg. No. 2044272 – “chemical additives, namely, stabilizers used in the manufacture of cosmetics, coatings, plastics and textiles;” Reg. No. 2290134 – “chemical solvents for use in the manufacture of adhesives, automotive fluids, cleaners, degreasers, coatings, paints, cosmetics, printing inks and toiletries;” Reg. No. 2368519 – “chemical additives, namely, glycerine for use in the manufacture of food, detergents, pharmaceuticals, cosmetics, lubricants, coatings, rubber products and plastic products;” Reg. No. 3228293 – “chemicals for use in the manufacturing of oil well drilling fluids, paints, coatings, inks, varnishes, cosmetics and waxes;” Reg. No. 3592015 – “chemicals used in the manufacture of coatings,…chemicals used in the manufacture of cosmetics;” Reg. No. 3773160 – “chemicals for use in the manufacture of cosmetics, toiletries, fragrances, lubricants, textiles, agrochemicals, paints, pharmaceuticals and coatings;” Reg. No. 4225016 – “chemical additives for use in the manufacture of plastics, paints, cosmetics, detergents, textiles and color stabilization and protection from UV light in candles;” Reg. No. 4706438 – “chemical additives for use in the manufacture of paint, coatings, and various emulsions, namely, personal care products, cosmetics, nail polish, lipstick.” Such third-party registrations that are based on use in commerce have some probative value to the extent that they suggest that the listed goods are of types which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Although such registrations do not prove that the registered marks are actually used in the marketplace on both types of goods, they at least demonstrate Serial No. 79175433 - 20 - that a number of companies have sought and obtained registrations of marks for use on both types of goods. Applicant’s contention that the goods are unrelated is not borne out by an examination of the registrations and Internet evidence discussed above. Relationship of the Trade Channels and Classes of Consumers. The only evidence relating to the trade channels through which the goods travel is the third-party website evidence submitted by the Examining Attorney, discussed above. This evidence shows that certain websites feature goods that are similar in type to the goods of Applicant and Registrant. Applicant argues that Cosmetics are a personal care product, used by people to improve their own appearance. Paint is a product sold to change the outward appearance of an object or a building. Cosmetics and paints are not likely to be sold in the same stores (or, at least, in the same sections of large department stores). More importantly, there is no evidence of any overlap in customers for Applicant’s goods and those offered under the cited registration. In other words, there is no evidence that consumers who purchase chemicals for use in the manufacture of cosmetics would also be in the market for chemicals for use in the manufacture of paints, or vice versa16 However, the goods at issue herein are not paints and cosmetics but chemicals used in the manufacture of paints, finishes, coatings on one hand and cosmetics on the other. While we recognize the obvious differences between paints and cosmetics, the evidence discussed above suggests that the same entities produce chemicals for the manufacture of both types of goods. Furthermore, the evidence discussed above suggests that both Applicant’s goods and Registrant’s goods may be purchased from 16 6 TTABVUE 20. Serial No. 79175433 - 21 - the same third parties at least on commercial Internet websites. We find the evidence sufficient to show that, in the marketplace, goods of the same type as those of Applicant and Registrant are found in at least one common trade channel, namely, the Internet, and are available from the same third parties to consumers of both types of goods. Balancing the factors In view of the facts that the marks are highly similar, that the goods are related, move in at least one identical channel of trade, and are available to the same consumers, we find that a likelihood of confusion exists between the mark and goods identified in the involved application and the mark and goods in the cited registration. Decision: The refusal to register Applicant’s mark PRIMALHYAL is affirmed.