Spatz Laboratories

Trademark Trial and Appeal Board

Mar 1, 2018

No. 86720827 (T.T.A.B. Mar. 1, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 1, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Spatz Laboratories
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Serial No. 86720827
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Christine C. Washington for Spatz Laboratories.

Roger T. McDorman, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Kuhlke, Cataldo and Coggins, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Spatz Laboratories (Applicant) seeks registration on the Principal Register of the
standard character mark SUPER SHOCK SHADOW for “Eye shadow, eye shadow
pigments, pigment powders for cosmetic use,” in International Class 3.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles

1 Application Serial No. 86720827, filed on August 11, 2015, based upon Applicant’s allegation
of first use and use in commerce on May 1, 2014 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
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the mark SUPERSHOCK in standard characters registered on the Principal Register
for “mascara,” in International Class 3,2 as to be likely to cause confusion, mistake or
deception.
In addition, the Examining Attorney refused registration under Trademark Act
Section (6), 15 U.S.C. § 1056, based on Applicant’s failure to comply with a
requirement to disclaim the word SHADOW, which the Examining Attorney
maintains is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), when used in connection with Applicant’s goods, and therefore must be
disclaimed apart from the mark as shown.
When the refusals were made final, Applicant appealed and filed a request for
reconsideration. Subsequently, the Examining Attorney denied the request for
reconsideration, the Board resumed the appeal, and the Examining Attorney and
Applicant filed briefs. We affirm the refusals to register.
Disclaimer Requirement
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. 15 U.S.C. § 1056. This section of the
statute was amended in 1962 to allow the exercise of greater discretion by examining
attorneys in determining whether a disclaimer is necessary. See TMEP § 1213.01(a)
(October 2017). See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d
1262 (Fed. Cir. 2015). Merely descriptive or generic terms are unregistrable under

2 Registration No. 3481656, issued on August 5, 2008, Sections 8 & 15 Combined Declaration
accepted and acknowledged.
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Section 2(e)(1), and therefore are subject to disclaimer if the mark is otherwise
registrable. Failure to comply with a disclaimer requirement is grounds for refusal of
registration. La. Fish Fry, 116 USPQ2d at 1264 (citing In re Stereotaxis, Inc., 429
F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005)) (“The PTO can condition the
registration of a larger mark on an applicant’s disclaimer of an ‘unregistrable
component of a mark otherwise registrable.’ 15 U.S.C. § 1056(a)”). See also In re
Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
A term is deemed to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it immediately conveys information of a quality, feature, function,
or characteristic of the goods or services in connection with which it is used, or
intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a term is merely
descriptive must be made “in relation to the goods for which registration is sought,
the context in which it is being used, and the possible significance that the term would
have to the average purchaser of the goods because of the manner of its use or
intended use.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978)). It is not necessary, in order to find a term merely descriptive, that the
term describes each feature of the goods or services, only that it describes a “single
feature or attribute” of the goods or services. Chamber of Commerce of the U.S., 102
USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
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The Examining Attorney contends that SHADOW is “commonly used in
connection with similar goods to mean ‘a cosmetic available in various colors or tints
and applied especially to the eyelids to enhance the eyes.’” 11 TTABVUE 17. In
support of his position that the term SHADOW is merely descriptive of the applied-
for goods, the Examining Attorney relies on the dictionary definition of “eye shadow”
as being “[a] cosmetic available in various colors or tints and applied especially to the
eyelids to enhance the eyes.”3 In addition, the Examining Attorney submitted
evidence in the form of third-party webpages using the word SHADOW to describe a
cosmetic applied to the eyes. Examples are set forth below:4

3 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(www.ahdictionary.com), November 25, 2015 Office Action at 11.
4 November 25, 2015 Office Action at 4-11.
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Additional examples include web pages from third-party websites attached to the
May 2, 2016 Office Action and July 4, 2016 Request for Reconsideration from a variety
of cosmetic companies including KIKO, MAC, Mary Kay and NARS.
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The Examining Attorney also submitted examples of third-party use of the word
SHADOW in online articles to describe a cosmetic for use on the eyes:5
How to Apply 3 Color Eyeshadow … Strategically applying
three eye shadow colors to your eyes helps shape and define
the eye so that the areas you want to enhance pop out,
while muting the areas you don’t want to enhance… If you
don’t have an eye shadow trio, pick three shadows that are
similar in color but have varying shades.
(https://www.leaf.tv/articles);
19 Eyeshadow Basics Everyone Should Know … Cream
eyeshadows work best as a base color for powder eye
shadow, or for solid, single color coverage. … Pressed
eyeshadows are the most common type of shadow, because
they blend easily without being too messy. … You can use
a slightly lighter color and skip the gold glitter shadow for
an everyday take on this look. (www.buzzfeed.com); and
Eye Makeup Trends by Decade: The Shadow, Mascara, and
More That Ruled the Last 100 Years … Inspired by the
increased distribution of movies, expanded reach of cinema
stars … rings of dark shadow became the chic evening look
of the era. (www.elle.com).
In response, Applicant argues “that the word SHADOW, in the context of
Applicant’s product line, which, on information and belief, includes names like ‘Going
Rogue,’ ‘Let Me Explain,’ “Liar, Liar,’ connotes a sense of mystery or that which is
hidden, not obvious – in the ‘shadows.’” 9 TTABVUE 8. In the alternative, Applicant
accepts “the requested disclaimer if doing so will result in the approval of the
application for publication.” Id.
In our analysis of the proposed term SHADOW we must consider “the context in
which it is being used, and the possible significance that the term would have to the

5 July 4, 2016 Request for Reconsideration 54-81.
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average purchaser of the goods because of the manner of its use or intended use.”
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. The fact that “a term may
have other meanings in different contexts is not controlling.” In re Franklin Cnty.
Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012); In re Chopper Indus., 222
USPQ 258, 259 (TTAB 1984). Here, the direct connection of the word SHADOW to
eye shadow is not lost in the context of the mark SUPER SHOCK SHADOW as a
whole and does not present a double entendre that creates a unique or incongruous
commercial impression. As seen in Applicant’s specimen of use, the word SHADOW
is below the wording SUPER SHOCK which serves to underscore its merely
descriptive meaning, i.e., the goods are eye shadow. Applicant’s specimen of use is
displayed in figure 1 below:6

Figure 1.
The record establishes that the word SHADOW when used in connection with the
applied-for goods immediately, without doubt, describes a feature of the goods,
namely, that they are “eye shadow, eye shadow pigments, pigment powders for

6 August 11, 2015 Application.
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cosmetic use.” In view of our finding that SHADOW is merely descriptive of
Applicant’s goods, the disclaimer requirement is appropriate.
Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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 (CCPA 1976).
Similarity of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the application and cited registration. See In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the
consuming public may perceive [the respective goods of the parties] as related enough
to cause confusion about the source or origin of the goods and services.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting
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Hewlett Packard, 62 USPQ2d at 1004). In other words, we must consider not whether
the actual goods are literally the same or similar, but rather whether the public will
be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000); In re Shell Oil Co., 992 F.2d 1204, 1207, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993).
Applicant argues that “the only thing that the Applicant’s goods share in common
with the cited goods are that they are cosmetics and, as demonstrated in several
previous Board and court decisions … that is simply not enough to support a finding
of likelihood of confusion.” 9 TTABVUE 6 (emphasis in original). However, the record
clearly demonstrates the close relationship between “mascara” and “Eye shadow, eye
shadow pigments, pigment powders for cosmetic use.” It is common for the same
entity to produce and sell these items under the same mark in the same channels of
trade to the same classes of consumers. The record includes many examples from
third-party websites demonstrating this. See, e.g., L’Oreal,7 Maybelline,8
Neutrogena,9 KIKO10 and MAC11 all showing eye shadow and mascara offered under
the same mark. In addition, the Examining Attorney provided fifteen use-based third-
party registrations where marks are registered for use in connection with mascara
and eye shadow. See July 4, 2016 Denial of Request for Reconsideration at 2-49.

7 November 25, 2015 Office Action at 4-5.
8 Id. at 6-8.
9 Id. at 9.
10 May 2, 2016 Office Action at 13-15.
11 Id. 16-19.
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Third-party registrations that cover a number of different goods or services may have
some probative value to the extent that they may serve to suggest that goods or
services are of a type that may emanate from a single source, if the registrations are
based on use in commerce. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the
goods and services of both parties, if presented, is relevant to the relatedness
analysis”); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d
per curiam, 864 F.2d 149 (Fed. Cir. 1988).
The cases relied upon by Applicant are infringement cases where the courts take
into account all aspects of the specific goods and marks as used in the marketplace.
However, as noted above, in our analysis for trademark registration we are bound by
the marks and goods as identified in the application and cited registration. In this
case, there are no restrictions as to channels of trade or classes of consumers in the
cited registration or the application.
Based on this record we find that the du Pont factors of the relatedness of goods,
channels of trade and consumers weigh in favor of likelihood of confusion.
In addition, products such as cosmetics may be relatively inexpensive and the
subjects of impulse purchases. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441
(TTAB 2012); Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1640-41 (TTAB 2007).
“When products are relatively low-priced and subject to impulse buying, the risk of
likelihood of confusion is increased because purchasers of such products are held to a
lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
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USPQ2d 1894, 1899 (Fed. Cir. 2000). Because the identification of goods in the
application and cited registration contain no limitations as to price points, we must
presume that the recited cosmetics include lower cost make-up items that may be
purchased without a high degree of care.
Applicant’s unsupported argument that the purchasing decision for cosmetics
“involves substantial contemplation and forethought” is not persuasive. 9 TTABVUE
8. While some care may be taken in purchasing cosmetics, it does not rise to the level
to obviate likely confusion where, as here, the goods are closely related and the marks,
as discussed infra, highly similar. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26
USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even sophisticated purchasers
can be confused by very similar marks”).
Similarity/Dissimilarity of the Marks
We consider Applicant’s mark SUPER SHOCK SHADOW and Registrant’s mark
SUPERSHOCK and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). The marks “‘must be considered … in light
of the fallibility of memory ….’” St. Helena Hosp., 113 USPQ2d at 1085 (quoting San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1
(CCPA 1977)). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. Winnebago Indus.,
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Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The first part of Applicant’s mark incorporates the entirety of Registrant’s mark
and is identical save for the space in Applicant’s mark, which has no effect in
distinguishing them. Stock Pot, Inc. v. Stockpot Rest., Inc., 220 USPQ 52 (TTAB
1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that
the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The
word marks are phonetically identical and visually almost identical.”). See also
Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks
‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal
citation omitted].”) Moreover, consumers are generally more inclined to focus on the
first word or wording in a trademark. Palm Bay v. Veuve Clicquot, 73 USPQ2d at
1692; In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016).
The only other difference between the marks is the addition of the descriptive term
SHADOW to Applicant’s mark. “[I]n 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 given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l
Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also
Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161. Although
there is no mechanical test to select a “dominant” element of a compound word mark,
consumers would be more likely to perceive a fanciful or arbitrary term, rather than
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a descriptive or generic term, as the source-indicating feature of the mark. See, e.g.,
In re Dixie Rests., Inc., 41 USPQ2d at 1533-34 (affirming TTAB’s finding that
“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the
mark THE DELTA CAFE); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding
that “BINION’S,” not the disclaimed descriptive wording “ROADHOUSE,” is the
dominant portion of the mark BINION’S ROADHOUSE). Accordingly, if two marks
for related goods or services share identical or similar dominant features and the
marks, when viewed in their entireties, create similar overall commercial
impressions, then confusion is likely. See, e.g., In re Cynosure, Inc., 90 USPQ2d 1644
(TTAB 2009) (holding CYNERGY for medical lasers for, inter alia, treatment of the
face and skin, and SYNERGIE PEEL for medical devices for microdermabrasion,
likely to cause confusion, noting that “SYNERGIE” is the dominant portion of the
cited mark and “PEEL” is insufficient to distinguish the marks).
Applicant asserts that “inclusion of the word SHADOW creates an overall
commercial impression that negates a finding of confusing similarity.” 9 TTABVUE
7. However, the word SHADOW in Applicant’s mark does not alter the connotation
or commercial impression to sufficiently distinguish SUPER SHOCK SHADOW from
SUPERSHOCK. Cf. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350,
1356-57 (Fed. Cir. 2004) (THE RITZ KIDS for gloves conveys different commercial
impression from RITZ for barbeque mitts). It simply describes what the goods are.
The addition of SHADOW to Applicant’s mark, as used for “Eye shadow, eye shadow
pigments, pigment powders for cosmetic use” could lead consumers to believe that
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SUPERSHOCK has expanded its product line of mascara to include eye shadow. We
find that, viewed as a whole, the similarities between the marks in appearance,
sound, connotation and commercial impression, due to the common and dominant
elements SUPERSHOCK and SUPER SHOCK, outweigh the dissimilarities. Stone
Lion Capital Partners, L.P. v. Lion Capital LLP, 110 USPQ2d at 1161. In view
thereof, the du Pont factor of the similarity of the marks also favors a finding of
likelihood of confusion.
Balancing the Factors
In conclusion, because the marks are similar, the goods are related, and the
channels of trade and consumers overlap, we find that confusion is likely between
Applicant’s mark SUPER SHOCK SHADOW and the mark SUPERSHOCK in the
cited registration.
Decision: The refusal to register based on likelihood of confusion under Section
2(d) of the Trademark Act is affirmed.
The refusal to register absent a disclaimer for SHADOW under Section 6 of the
Trademark Act is affirmed. However, if Applicant submits the required disclaimer
within 30 days of the mailing date of this decision, the decision as to the disclaimer
requirement will be set aside, but the application will not be passed to publication in
view of the decision under Section 2(d). If the disclaimer is submitted, the wording
will read as follows: No claim is made to the exclusive right to use “SHADOW” apart
from the mark as shown. See TMEP § 1213.08(a)(i).