Toma Industries, Inc.

Trademark Trial and Appeal Board

Mar 15, 2002

No. 75524079 (T.T.A.B. Mar. 15, 2002)

3/15/02 Paper No. 16
csl

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Toma Industries, Inc.

Serial No. 75/524,079
_____

Jay H. Geller, Esquire, for applicant.

Renee McCray, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Simms, Quinn and Rogers, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Toma Industries, Inc. (applicant), a California
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark MAGIC
LASH for “eye liner and synthetic fibers applie[d] to
eyelashes to increase length and fullness.”1 In the
application, applicant disclaimed the word “LASH” apart
from the mark as shown.

1 Serial No. 75/524,079, filed July 23, 1998, based upon applicant’s bona
fide intention to use the mark in commerce. The original description
of goods in the application was “mascara, eye-liner and synthetic
fibers for lengthening the eyelashes.”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/524,079
2
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 1,833,605, issued May 3, 1994, Section 8
affidavit accepted, for the mark CILS MAGIQUE covering
“cosmetics, namely mascara.” In the registration it is
indicated that the mark “CILS MAGIQUE” translates to “magic
eyelashes.”
Applicant and the Examining Attorney submitted briefs
but no oral hearing was requested.
We affirm.
It is applicant’s position that the doctrine of
foreign equivalents should not be applied in this case
because the marks create different commercial impressions
and because applicant believes that it is “highly unlikely”
that a consumer will translate registrant’s mark. Brief,
2. Rather, it is applicant’s position that the consumer
will only remember that the mascara sold under the
registered mark is from Chanel, Inc., the well-known
cosmetics company. While acknowledging that mascara,
eyeliner, and synthetic fibers for eyelashes are “impulse”
purchase items, applicant contends that registrant’s goods
would appeal to upper-income purchasers and would be bought
at Chanel boutiques in upscale department stores.
Applicant also has argued, Amendment, filed July 24, 2000,
Serial No. 75/524,079
3
p. 2, that mascara and eyeliner are not closely related
products. Finally, in its brief, applicant contends that
the mark MAGIC appears in at least 220 registered marks,
and that the mark MAGIC is “weak” in relation to Class 3
goods (soaps, perfumery, essential oils, cosmetics, hair
lotions, etc.).
We agree with the Examining Attorney, however, that
confusion is likely in this case. First, the doctrine of
foreign equivalents requires that foreign words from a
language known to an appreciable segment of American
consumers be translated into English before a comparison of
the marks is made. See, for example, In re Perez, 21
USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2
USPQ2d 1459 (TTAB 1987) and In re Ithaca Industries, Inc.,
230 USPQ 702 (TTAB 1986). Here, according to the
registration and a copy of the pertinent page from a
French-English dictionary,2 the French words “cils magique”
are translated as “magic eyelashes.” The Examining
Attorney has also made of record evidence that the word
“lash” means “eyelash.” It is the Examining Attorney’s
position, therefore, that the registered mark CILS MAGIQUE
(meaning “magic eyelashes”) is equivalent in connotation

2 Cassell’s French-English English-French Dictionary (1981). The French
word “cil” is translated as “eyelash.”
Serial No. 75/524,079
4
and commercial impression to applicant’s mark MAGIC LASH
and that these marks are otherwise similar in appearance
and sound. We agree.
It is also clear, as the Examining Attorney has
argued, that the dominant part of each mark is the word
“MAGIQUE” on the one hand and “MAGIC” on the other, because
“EYELASHES” and “LASH” are descriptive or generic terms for
cosmetics for the eyes and eyelashes and are, therefore,
entitled to less weight in the likelihood-of-confusion
analysis.
Concerning the goods, registrant’s mascara (a cosmetic
applied to darken the eyelashes) is very closely related to
applicant’s eyeliner and synthetic fibers applied to
eyelashes. Moreover, the Examining Attorney has made of
record 25 third-party registrations showing that numerous
companies have registered a mark covering both eyeliner and
mascara. Further, the goods of both applicant and
registrant may serve the same function of lengthening the
eyelashes.
As both attorneys seem to acknowledge, the respective
goods can be relatively inexpensive. Therefore, purchasers
of such goods are held to a lesser standard of care in the
purchasing decision.
Serial No. 75/524,079
5
Finally, even if the registered mark may be considered
somewhat suggestive and weak,3 it is nevertheless entitled
to protection from the registration of a very similar mark
for closely related goods.
Decision: The refusal of registration is affirmed.

3 Applicant’s statement in its brief concerning the numerous third-party
registrations which include the word “MAGIC” is unsupported by any
evidence.