SpireBlack, LLC

Trademark Trial and Appeal Board

Feb 11, 2013

No. 85187101 (T.T.A.B. Feb. 11, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 11, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SpireBlack, LLC
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Serial No. 85187101
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Sharon Blinkoff of Venable LLP for SpireBlack, LLC.

Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Seeherman, Kuhlke, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
SpireBlack, LLC filed an application to register on the Principal Register the
mark DermPlex, in standard character form,1 for goods identified as set forth below:
Alpha hydroxy acids (AHAs), retinols, and peptides, all
sold as integral ingredients of age spot reducing creams,
anti-aging creams, anti-freckle creams, anti-wrinkle
creams, beauty creams, beauty creams for body care,
beauty lotions, body creams, face and body beauty creams,
face and body creams, face creams, face creams and
cleansers containing benzoyl peroxide for cosmetic

1 Application Serial No. 85187101, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
November 30, 2010.
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purposes, face creams for cosmetic use, in International
Class 3.
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, which is registered on the Principal Register for
“Non-medicated skin creams,”2 that, if used in connection with applicant’s goods, it
is likely to cause confusion, or to cause mistake, or to deceive.

When the refusal was made final, applicant appealed. Applicant and the examining
attorney have filed briefs and applicant has filed a reply brief.
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). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and
the examining attorney have also submitted evidence and arguments regarding the
strength of the cited mark; the number of other similar marks in the marketplace,
and likely trade channels for the goods.

2 Reg. No. 3738030, issued on January 12, 2010.
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We turn first to the similarity or dissimilarity of the goods at issue. Du Pont,
177 USPQ at 567. The goods identified in the cited registration are “Non-medicated
skin creams.” Applicant’s goods are “Alpha hydroxy acids (AHAs), retinols, and
peptides, all sold as integral ingredients of” various creams and lotions for skin, face
and body, for cosmetic use. The wording “sold as integral ingredients of” indicates
that applicant’s goods reach their intended customers only in the form of cosmetic
creams and lotions that contain applicant’s goods. Applicant, in its brief, took care
to emphasize that its goods are not ingredients sold to manufacturers for further
manufacture. Rather, at the time of sale, the goods are incorporated into consumer
products, namely cosmetic creams and lotions. See applicant’s brief, p. 7-8, items 1
and 5, where applicant attempts to distinguish its goods from those of third-party
registrations (“the essential oils in [the cited third-party] registration are for use ‘in
the manufacture’ of cosmetics, not sold as an integral ingredient of a consumer
product”). Because the application is based on intent-to-use, we do not have
specimens showing how the mark is used on the goods, but we assume that it is
used either as an ingredient mark for applicant’s own goods or for the goods of a
third party that has incorporated applicant’s goods into its cosmetics and is
authorized to use applicant’s mark in describing the ingredients thereof. It makes
no difference for purposes of our analysis.
We find that a high degree of commercial relationship between the goods at
issue is apparent from the identifications of the goods in the application and the
cited registration. As defined in the application, applicant’s goods will reach
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customers only within a container of cosmetic cream. Accordingly, the customers
who encounter applicant’s mark are purchasers of cosmetic creams. In order for
applicant’s mark to function as a trademark for applicant’s goods, the mark must be
associated with the goods, so presumably the cosmetic cream that contains
applicant’s goods will be marked with wording such as “contains DERMPLEX
retinols” or “with DERMPLEX retinols.” Because applicant’s goods are contained
within various types of cosmetic creams that are used for the skin, e.g., anti-wrinkle
creams, and the registrant’s goods are non-medicated skin creams, the customers or
end users for applicant’s and the registrant’s goods are the same, and they will
encounter both marks under similar circumstances, namely, in purchasing cosmetic
skin creams. In determining whether the goods are related, it is not necessary that
the goods of the parties be identical or competitive in character to support a holding
of likelihood of confusion; it is sufficient that the goods are related in some manner
or that conditions surrounding their marketing are such that they would or could be
encountered by the same persons under circumstances that could, because of the
similarity of the marks used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same producer. Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399. 1410 (TTAB 2010); Schering
Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
Applicant argues that we should not consider a scenario in which applicant’s
mark appears on a container that also bears the registrant’s mark, “because
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Registrant could simply choose not to use Applicant’s integral ingredients if
Registrant believed there was a likelihood of confusion.”3 We agree. However, it is
reasonable to assume that a customer could be exposed to registrant’s trademark on
its skin cream and later be exposed to applicant’s trademark designating an
ingredient in a different brand of skin cream. In such circumstances it is likely that
the customer would assume, if the marks were confusingly similar, that the
ingredient and the skin cream were connected as to source or sponsorship. Thus,
we find that the circumstances under which applicant’s identified goods and
registrant’s identified goods could be marketed create a commercial relationship,
and that the goods are related.4
We turn next to consider the similarity or dissimilarity of the marks at issue.
Applicant’s mark is DermPlex, in standard character form. The cited registered
mark is a composite mark that includes the literal elements D DERMAPLEX-MD
and a circle background design. Applicant contends that the dominant portion of
the cited mark is the bold letter D within a shaded circle, which appears above the
other wording of the mark. However, we agree with the examining attorney’s view
that the dominant portion of the registered mark is the wording DERMAPLEX-MD.
In the case of marks consisting of words and a design, the words are normally given
greater weight because they would be used by consumers to request the products.
In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito

3 Applicant’s reply brief at 3.
4 In reaching this conclusion, we have not relied on the third-party registrations submitted
by the examining attorney.
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Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983). Further, when the mark is referred to in text, the wording will ordinarily be
used rather than the design. In calling for registrant’s goods, it is unlikely that
customers would use the form D DERMAPLEX-MD, as the letter D appearing in
the circular design is redundant of the first letter of DERMAPLEX-MD. Overall,
customers are likely to perceive the circular D design as an ornamental seal or
monogram that refers to the initial letter of the word element DERMAPLEX-MD.
The examining attorney made of record an internet advertisement for
registrant’s goods5 which shows use of the designation “DERMAPLEX-MD”
(without design) in the text of the ad. Applicant argues that this advertisement
cannot have “any logical relevance in determining what the dominant portion of the
cited mark… is,” and argues that we may not consider any mark of registrant other
than the one that is registered, citing In re Jump Designs LLC, 80 USPQ2d 1370,
1376 (TTAB 2006) and In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009). We find
the advertisement probative insofar as it indicates that registrant itself has given
separate prominence to the DERMAPLEX-MD portion of its mark, suggesting that
consumers may do the same. Jump Designs and Binion are inapposite to the
applicant’s arguments; those cases rejected the contention that an applicant’s mark
should be compared to a registrant’s mark as actually used, rather than as set forth

5 Submitted with the examining attorney’s Office action of January 20, 2011.
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in the registration. Here, the examining attorney does not suggest that we should
compare applicant’s mark only to the DERMAPLEX-MD portion of the registered
mark, nor would we do so. In our analysis under Section 2(d), we compare the
marks at issue in their entireties. However, 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). For the reasons given above, we treat DERMAPLEX-MD as the
dominant portion of the registrant’s mark.
Applicant contends that the designation DERMAPLEX in the cited mark is
weak because “the word derma is a synonym for dermis, which refers to a layer of
skin of the human body”;6 the suffix -PLEX is the subject of numerous registered
marks in the field of skin care products and is accordingly “suggestive”;7 and “the
combination of derma and –plex does not result in any incongruity, so it would seem
logical that if derma and –plex are both suggestive (or highly suggestive), the
combination is equally suggestive.”8 Applicant concludes that its mark “is only
similar to a suggestive portion of the cited mark.”9 Applicant has demonstrated
that “dermis” refers to a layer of the skin, but not that “derma” is a synonym for
“dermis.” Nonetheless, we agree that DERMA- is highly suggestive of goods

6 Applicant’s brief at 2.
7 Id. at 3-4; and information regarding registrations submitted with applicant’s response of
July 14, 2011.
8 Id. at 5.
9 Applicant’s brief at 6.
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relating to the skin. Applicant has not explained what meaning is suggested by the
suffix –PLEX. However, for purposes of our analysis, we will assume that –PLEX
does have suggestive significance, as it plausibly refers to the common word
“complex.” Even making this assumption, though, it is not clear to us that the
combination of the suggestive elements DERMA and PLEX results in a suggestive
term. Moreover, even marks that are weak because they are suggestive are entitled
to protection against confusion. Hunt Control Systems, Inc. v. Koninklijke Philips
Electronics N.V., 98 USPQ2d 1558, 1567-68 (TTAB 2011).
Considering applicant’s mark and the cited registered mark in their
entireties, we find the two marks to be confusingly similar. The similarities
between the two marks outweigh the differences. The dominant portion of the cited
mark is DERMAPLEX-MD; the circular “D” design is likely to be considered an
ornamental monogram. DERMPLEX and DERMAPLEX are nearly identical in
appearance and sound: the additional letter A embedded within the term
DERMAPLEX could easily be visually overlooked or elided in pronunciation. The
addition of the suffix –MD to DERMAPLEX is not sufficient to outweigh the nearly
identical correspondence between DERMPLEX and DERMAPLEX. We bear in
mind that the average customer retains a general rather than specific impression of
marks seen in the marketplace. Customers might well fail to notice the differences
between the two marks and, if such differences were noticed, they are not likely be
seen as indicating separate sources for the goods. See Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
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Paper Co., 190 USPQ 106, 108 (TTAB 1975). As for the meaning of the marks, and
accepting applicant’s argument that DERMAPLEX is suggestive, applicant’s mark
DERMPLEX is essentially identical in suggestive meaning to DERMAPLEX and,
accordingly, the marks as a whole are highly similar in meaning. Thus, we find
that the marks are similar in appearance, pronunciation, connotation and
commercial impression.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s goods, so closely resembles the cited registered mark as to be
likely to cause confusion, mistake or deception as to the source of applicant’s goods.
Decision: The refusal to register is affirmed.