Spatz Laboratories

Trademark Trial and Appeal Board

Jul 7, 2017

No. 86720832 (T.T.A.B. Jul. 7, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 7, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Spatz Laboratories
_____

Serial No. 86720832
_____

Christine C. Washington for Spatz Laboratories.

Roger T. McDorman, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Quinn, Kuhlke and Cataldo, 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 CHEEK for “Blush; Skin Bronzer;
Highlighters 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. 86720832, filed on August 11, 2015, based upon Applicant’s allegation
of first use and use in commerce on February 1, 2015 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
Serial No. 86720832
- 2 -

the mark SUPER SHOCK 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 CHEEK, 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)
(April 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, Section 8&15 Combined Declaration
accepted and acknowledged.
Serial No. 86720832
- 3 -

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 [or services] 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 describe each feature of the goods or services, only that it describe 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).
Serial No. 86720832
- 4 -

The Examining Attorney contends that CHEEK merely describes “the intended
use” of Applicant’s goods, namely, that the word CHEEK is “commonly used in
connection with similar goods to mean the part of the face to which the applicant’s
blush, skin bronzer and cosmetic highlighters are applied.” 11 TTABVUE 16. In
support of his position that the term CHEEK is merely descriptive of the applied-for
goods, the Examining Attorney relies on the dictionary definitions of “cheek” as being
“the soft part on each side of your face below your eyes”3 and “blush” as “makeup used
on the face and especially on the cheekbones to give a usually rosy tint.”4 In addition,
the Examining Attorney submitted evidence in the form of third-party webpages
showing that blush, skin bronzer, and cosmetic highlighters are used on the cheek or
cheeks. Examples are set forth below:5

3 MACMILLAN DICTIONARY (www.macmillandictionary.com), November 25, 2015 Office
Action at 12.
4 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(www.ahdictionary.com) Id. at 13.
5 May 2, 2016 Office Action at 6, 11, 16 and 19.
Serial No. 86720832
- 5 -

Serial No. 86720832
- 6 -

In response, Applicant argues that “because the word [CHEEK] is commonly
understood to mean ‘irreverent’ or ‘bold,’ and in the context of the balance of the mark,
it falls squarely within the definition of a double entendre set forth in the TMEP
because that meaning is clearly not descriptive in relation to the goods.” 9 TTABVUE
9. In support of its argument, Applicant attached to its brief a dictionary definition
for the word “cheeky,” which has little probative value as the word in question here
is “cheek.” Applicant attached to its reply brief “several Internet references …
namely, dictionary references, including but not limited to Google’s search generated
definition in response to a request for ‘meaning of cheek’ as well as several website
Instagram screen shots from fashion and burlesque establishments.” 12 TTABVUE
6. All of this evidence is untimely. Trademark Rule 2.142(d). Further, while judicial
notice may be taken of dictionary definitions, Applicant’s submissions are not
Serial No. 86720832
- 7 -

sufficiently reliable for such notice.6 The definition properly of record includes the
following third definition, “British behavior that is rude or does not show respect,
especially toward someone who is older or more important.”7 However, this definition
has little probative value as it references British English rather than American
English. In re Manwin/RK Collateral Trust, 111 USPQ2d at 1313 n.18.
The record does not support Applicant’s position that the mark SUPER SHOCK
CHEEK presents a double entendre. However, even if we were to assume that U.S.
consumers are familiar with the British meaning of the word “cheek” as “rude” or
lacking in respect, Applicant’s argument that its “business/marketing persona (as
demonstrated by the edgy names of its various products and color variations thereof)
is designed and intended to stun,” is also unsupported by the record. In fact, some of
Applicant’s specimens of use separate the word CHEEK from the prior wording
SUPER SHOCK which has the effect of underscoring its merely descriptive meaning,
i.e., the cosmetic is for your cheek. One of Applicants’ specimens of use is displayed
below:8

6 The MACMILLAN DICTIONARY definition is from the British edition of this online reference,
and, as such, has little probative value as to the meaning of the term “cheek” in the United
States. See In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 n.18 (TTAB 2014).
The Google search retrieved an excerpt from the CAMBRIDGE ENGLISH DICTIONARY but it
is unclear if this is a reference to American or British English. Finally, Urban Dictionary
definitions may only be considered “so long as the non-offering party has an opportunity to
rebut that evidence.” In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n. 3 (TTAB 2013).
Applicant’s submission of this material with the reply brief does not afford this opportunity.
7 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(www.ahdictionary.com) November 25, 2015 Office Action at 13.
8 August 11, 2015 Application.
Serial No. 86720832
- 8 -

This record clearly shows that CHEEK when used in connection with the applied-
for goods immediately, without doubt, describes a feature of the goods, namely, that
they are for use on the cheek. As the evidence establishes, Applicant’s goods are
designed for use on the cheek. Applicant’s argument that consumers, rather than
understanding the simple and immediate connotation of “cheek” in this context,
would reach for the meaning “irreverent” or “bold” is unsupported and unconvincing.
By contrast, the record contains examples of blush being described as for use on the
cheek.
In our analysis of the proposed term CHEEK we must consider “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.”
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). In view of our finding that CHEEK is merely descriptive
of Applicant’s goods, the disclaimer requirement is appropriate.
Serial No. 86720832
- 9 -

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
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
Serial No. 86720832
- 10 -

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 “blush; skin
bronzer; highlighters 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., Cover Girl showing blush and mascara offered under
the same mark;9 Milani Cosmetics showing blush, skin bronzer, cosmetic
highlighters, and mascara offered under the same mark;10 Benefit showing blush,
skin bronzer, cosmetic highlighters, and mascara offered under the same mark;11 and
Mary Kay showing blush, skin bronzer, cosmetic highlighters, and mascara offered
under the same mark.12
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.

9 November 25, 2015 Office Action at 7-8
10 November 25, 2015 Office Action at 9-10.
11 May 2, 2016 Office Action at 2-5.
12 May 2, 2016 Office Action at 7-10.
Serial No. 86720832
- 11 -

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 Management 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 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.
Similarity/Dissimilarity of the Marks
We consider Applicant’s mark SUPER SHOCK CHEEK 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.,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Serial No. 86720832
- 12 -

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 difference between the marks is the addition of the descriptive term
CHEEK 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
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
Serial No. 86720832
- 13 -

“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).
The addition of the merely descriptive word CHEEK to Applicant’s mark is not
sufficient to convey a different commercial impression from Applicant’s mark. 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 where the goods are used. To the extent
Applicant’s argument that the mark SUPER SHOCK CHEEK is a double entendre
has any traction, the meaning “irreverent” or “bold” simply enhances the meaning of
“shock” which is also present in Registrant’s mark. Either way, the word CHEEK in
Applicant’s mark does not alter the connotation or commercial impression to
sufficiently distinguish SUPER SHOCK CHEEK from SUPERSHOCK. In fact, the
addition of CHEEK to Applicant’s mark, as used for “blush; skin bronzer; highlighters
Serial No. 86720832
- 14 -

for cosmetic use” could lead consumers to believe that SUPERSHOCK has expanded
its product line of mascara to include blushes, bronzers and highlighters. 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 element
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 CHEEK 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 CHEEK 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 “CHEEK” apart
from the mark as shown. See TMEP § 1213.08(a)(i).