The Perfumer’s Workshop, Ltd.

Trademark Trial and Appeal Board

Feb 5, 1998

No. 74617171 (T.T.A.B. Feb. 5, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 5,98
Paper No. 9
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Perfumer’s Workshop, Ltd.
________
Serial No. 74/617,171
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Norris D. Wolff of Kleinberg, Kaplan, Wolff & Cohen for The
Perfumer’s Workshop, Ltd.
George C. Pologeorgis, Trademark Examining Attorney, Law
Office 107 (Thomas S. Lamone, Managing Attorney).
_______
Before Sams, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by The Perfumer’s
Workshop, Ltd. to register the mark shown below
for “perfumes, eau de toilette, and colognes.”1

1 Application Serial No. 74/617,171 filed January 3, 1995,
alleging a bona fide intention to use the mark in commerce. The
term “Perfumer’s” is disclaimed apart from the mark as shown.
Ser No. 74/617,171
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
applied to the identified goods, so resembles the previously
registered mark shown below
for “cosmetics; namely, lip gloss, lip stick, lip pencil,
face powder, pressed powder, mascara, eye shadow, eye liner,
blush, foundation, concealer, [and] nail polish;”2 and
“retail store services in the fields of personal care and
beauty products,”3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs, but
no oral hearing was requested.
Turning first to a consideration of the respective
goods and services, we note that it is not necessary that
goods and/or services be identical or even competitive in
nature to support a likelihood of confusion. It is
sufficient that the circumstances surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that would give rise,
because of the marks used in connection therewith, to the

2 Registration No. 1,808,735 issued December 7, 1993.
Ser No. 74/617,171
3
mistaken belief that the goods/services originate from or
are in some way associated with the same source. See In re
International Telephone and Telegraph Corp., 197 USPQ 910
(TTAB 1978).
In this case, we agree with the Examining Attorney that
applicant’s perfumes, eau de toilette, and colognes are
closely related to registrant’s cosmetics. See Capri
Cosmetics, Inc. v. Nina Ricci S.A.R.L., 142 USPQ 361 (TTAB
1964) [Cosmetics and beauty preparations and perfumes are
closely related goods]. Applicant has attempted to
distinguish the trade channels in which the parties’ goods
move, contending that registrant’s cosmetics are sold only
in registrant’s retail stores. However, as the Examining
Attorney correctly observes, the cited registration has no
limitation of any sort and the cosmetics listed therein must
be presumed to move in all channels of trade normal for such
goods. See In re Davis Cleaver Produce Company, 197 USPQ
248 (TTAB 1977). Thus, in our likelihood of confusion
analysis, we must assume that applicant’s perfumes, eau de
toilette, and colognes and registrant’s cosmetics are sold
in all channels of trade normal for such goods, i.e., mass
merchandisers, drug stores, discount stores and department
stores. Further, there is without question a connection
between retail store services in the fields of personal care

3 Registration No. 1,820,263 issued February 8, 1994.
Ser No. 74/617,171
4
and beauty products and personal care products such as
perfumes, eau de toilette, and colognes. We find,
therefore, that applicant’s perfumes, eau de toilette, and
colognes and registrant’s cosmetics and retail store
services in the fields of personal care and beauty products
are sufficiently related that if the same or similar marks
are used in connection therewith, confusion as to source
would likely occur.
Turning then to a consideration of the marks, we find
that applicant’s mark PERFUMER’S WORKSHOP WATERCOLORS and
design and the registered mark WATERCOLORS BY H2O PLUS
engender similar overall commercial impressions. In
considering the marks, we recognize that the house marks,
namely, PERFUMER’S WORKSHOP and H2O PLUS, in the respective
marks cannot be ignored. However, although we have resolved
likelihood of confusion upon consideration of the marks in
their entireties, there is nothing improper in giving more
weight, for rational reasons, to a particular feature of the
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
748, 751 (Fed. Cir. 1985). In this case, we have given more
weight to the word WATERCOLORS in each of the respective
marks. We have done so because WATERCOLORS is displayed in
prominent fashion in applicant’s mark and WATERCOLORS is the
first word in registrant’s mark followed by its house mark.
Finally, in finding that the marks are similar, we have kept
Ser No. 74/617,171
5
in mind the normal fallibility of human memory over time and
the fact that the average consumer retains a general rather
than a specific impression of trademarks encountered in the
marketplace. This is particularly true here, because the
goods can be relatively inexpensive and bought off the shelf
in drug stores and mass merchandisers, under conditions in
which consumers will not take great care in making their
purchases.
Applicant contends that marks consisting of or
containing the word WATERCOLORS are weak marks and therefore
entitled to only a limited scope of protection. In support
of its claim, applicant submitted a list of third-party
registrations of marks consisting of or containing the word
WATERCOLORS. However, as the Examining Attorney points out,
simply submitting a list of registrations does not make the
registrations of record. Only submission of copies of such
registrations would have made them of record. In re Duofold
Inc., 184 USPQ 638, 640 (TTAB 1974). Moreover, even if
copies of the registrations had been made submitted and the
registrations were in agreement with the list provided by
applicant, such third-party registrations, without evidence
that the marks therein are in actual use, would have little
probative value on the issue of whether confusion is likely
in this case. In re Hub Distributing, Inc., 218 USPQ 284
(TTAB 1983). Third-party registrations are not evidence of
Ser No. 74/617,171
6
use of the marks in such registrations. Charrette Corp. v.
Bowater Communications Papers, Inc., 13 USPQ2d 2040 (TTAB
1989). Another reason the third-party registrations would
not be particularly useful to our analysis, even if they had
been submitted, is that none of the registrations covers
goods or services of the type involved herein.
While no doubt the word WATERCOLORS is suggestive of
registrant’s cosmetics, this fact does not help to
distinguish the parties’ marks. It is well settled that a
suggestive mark is entitled to protection against the
registration by a subsequent user of the same or similar
mark for related goods and services. In re Textron, Inc.,
180 USPQ 341 (TTAB 1973).
We conclude that consumers familiar with registrant’s
cosmetics and retail store services in the fields of
personal care and beauty products offered under the mark
WATERCOLORS BY H2O PLUS, would be likely to believe, upon
encountering applicant’s mark PERFUMER’S WORKSHOP
WATERCOLORS for perfumes, eau de toilette, and colognes,
that the goods and services originated with or are somehow
associated with the same source.
Finally, it is well settled that, if there is any doubt
on the issue of likelihood of confusion, that doubt must be
resolved against the newcomer and in favor of the prior user
and registrant. In re Pneumatiques, Caoutchouc Manufacture
Ser No. 74/617,171
7
et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729
(CCPA 1973).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
J. D. Sams
R. F. Cissel
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board