Topiclear, Inc.v.K & N Distributors

Trademark Trial and Appeal Board

Feb 25, 2019

92062923 (T.T.A.B. Feb. 25, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: October 30, 2018 Mailed: February 25, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Topiclear, Inc.
v.
K & N Distributors
________

Cancellation No. 92062923
_______

Donald L. Dennison of Butzel Long PC,
for Topiclear, Inc.

Carrie Shufflebarger and Eric Heyer of Thompson Hine LLP,
for K & N Distributors.
_____

Before Zervas, Cataldo and Coggins,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On September 22, 2015, Registration No. 4818656 (hereinafter “the ‘656
registration”) for the standard character mark TROPIC CLAIR PLUS issued on the
Principal Register to K & N Distributors (“Respondent”) for “cosmetics” in
International Class 3 based on an application filed on December 23, 2013. The ‘656
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registration identifies first use and first use in commerce of the mark on June 1, 2015.
The registration states that the English translation of “CLAIR” is “CLEAR.”
Topiclear, Inc. (“Petitioner”) filed an amended petition to cancel1 the ‘656
registration, alleging priority of use of the mark TOPICLEAR since at least as early
as January 7, 1992 for cosmetic products, and ownership of a family2 of four registered
standard character marks:3
Registration No. 4260606 (“the ‘606 registration”) for TOPICLEAR
(filed March 22, 2012 and registered December 18, 2012) for “cosmetics,
face, hand, and body creams and beauty gels, skin lightening creams,
soaps for personal use, lotions for the body and face, skin moisturizing
gels, non-medicated serums for the face, hands and body”;

Registration No. 4162009 for TOPICLEAR COLLECTION (filed
March 8, 2011 and registered June 19, 2012) for “non-medicated
cosmetics and skin care products, namely, soaps, creams, lotions,
serums and gels for the face, hands, hair and body, personal deodorants
and perfume”;

Registration No. 4158690 for TOPICLEAR GOLD (filed February 25,
2011 and registered June 12, 2012) for “non-medicated cosmetics and
skin care products, namely, soaps, creams, lotions, serums and gels for
the face, hands, hair and body, personal deodorants and perfume”; and

Registration No. 4256759 for TOPICLEAR PARIS (filed March 22,
2012 and registered December 11, 2012) for “cosmetics, face, hand, and
body creams and beauty gels, skin lightening creams, soaps for personal
use, lotions for body and face and skin moisturizing gels, non-medicated
serums for the face, hands and body, personal deodorants and perfumes,
shampoos and conditioners.”

1 17 TTABVUE.
2 Petitioner in its briefs mentions, but does not offer any proof of, its allegation that it has a
family of marks.
3 All goods are in International Class 3. The USPTO accepted and acknowledged Section 8
and 15 declarations for each registration.
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Petitioner claims a likelihood of confusion pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), between “Petitioner’s TOPICLEAR brand of
cosmetics and the like”4 and Respondent’s marks.5
Respondent filed an answer to the amended petition to cancel in which it denied
the salient allegations in the amended petition for cancellation.6
The parties have fully briefed the case, and the Board conducted a hearing at
Petitioner’s request.
A. The Record
The record in this case consists of the pleadings and the file of the involved
registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). In addition, the
record contains the following:
1. The trial testimony of Petitioner’s witness Johnny Graterol, part owner of
Petitioner, and Exhibits 1-21, including certified status and title copies of
Petitioner’s four pleaded registrations, showing Petitioner as the owner of
these registrations;

2. Respondent’s notice of reliance on printouts from the USPTO’s TSDR
database of 11 third-party registrations; and

3. The trial testimony of Respondent’s witness Jean Robert Cesar,
Respondent’s Vice-President, and Exhibits 1-17.

4 17 TTABVUE 7.
5 Petitioner also claims no lawful use in commerce in its amended notice of opposition but
waived this claim in the oral hearing. Because of Petitioner’s waiver, we give no further
consideration to this claim. See Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d
1313, 1314 n.4 (TTAB 2005); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) § 801.01 (June 2018).
6 19 TTABVUE.
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B. Evidentiary Issues
Respondent raised several evidentiary objections, which we address in turn below:
1. Respondent’s objection to Exh. 107 (printouts from third-party
websites) on the basis of a lack of foundation is sustained; Mr.
Graterol testified he never saw the exhibit prior to his deposition.8
2. Respondent’s objection to Mr. Graterol’s testimony regarding
Exh. 16 (which it maintains was not properly submitted) is
overruled; it appears the exhibit was submitted9 and the
testimony has probative value independent of the exhibit.
3. Respondent’s objection to what Respondent labels as Mr.
Graterol’s and Petitioner’s counsel’s misstatements regarding
Exhibits 16-17 is overruled. It appears that both exhibits were
submitted, and the Board is able to determine whether there is a
misstatement. Additionally, Respondent overstates its relevance
objection; Respondent’s objection on p. 41 of Mr. Graterol’s
testimonial deposition was directed to counsel’s question, not to
the exhibits.10 Respondent’s objection is overruled; his testimony
is relevant to the question of bad faith.
4. Respondent’s objection to Mr. Graterol’s statement at pp. 44-45 of
his testimonial deposition regarding comments from distributors
on the basis of hearsay is overruled; the Board is able to weigh
the probity of the statement and give it appropriate weight.
5. Respondent’s objection to Exhibits 4, 8, 12, 13 and 14 regarding
sales and advertising expenditures on the grounds of lack of
foundation and hearsay are overruled as our consideration of
these exhibits is not material to the outcome of this case.
6. Respondent’s objection to portions of Mr. Cesar’s cross-
examination is overruled. The testimony provides additional
information regarding Respondent and other entities and is not
material to the outcome of this case.

7 39 TTABVUE 20-25.
8 38 TTABVUE 28-29.
9 See 39 TTABVUE 35-36.
10 38 TTABVUE 43.
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C. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). A party has standing to seek cancellation of a
registration if the party believes it is likely to be damaged by the registration.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
Petitioner has properly made of record its pleaded registrations and shown the
registrations to be valid and subsisting, and owned by Petitioner. The registrations
demonstrate that Petitioner possesses a real interest in this proceeding beyond that
of a mere intermeddler, and a reasonable basis for its belief of damage. See, e.g., Id.
at 1844; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). We find, therefore, that Petitioner has proven its standing to petition
for cancellation of Respondent’s registration. Respondent does not dispute
Petitioner’s standing.11
D. Petitioner’s Burden of Proof
“Because a trademark owner’s certificate of registration is ‘prima facie evidence of
the validity of the registration’ and continued use of the registered mark, the burden
of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) (1988).
Accordingly, in a cancellation . . . the petitioner bears the burden of proof. Moreover,

11 48 TTABVUE 10.
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the petitioner’s burden is to establish the case for cancellation by a preponderance of
the evidence.” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) (internal citations omitted); see also,
On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed.
Cir. 2000).
E. Priority
A party claiming prior use of a mark may petition to cancel a registration on the
basis of such prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064.
In a cancellation proceeding, to establish priority on a likelihood of confusion claim
brought under Section 2(d) of the Trademark Act, a party must prove that, vis-à-vis
the other party, it owns “a mark or trade name previously used in the United States
… and not abandoned.” Trademark Act § 2(d). A party may establish its own prior
proprietary rights in a mark through actual use, use analogous to trademark use, or
an earlier constructive use date accorded to the party’s own application. See Giersch
v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
Petitioner’s pleaded ‘606 registration for the mark TOPICLEAR issued from an
application filed on March 22, 2012, before the December 23, 2013 filing date of
Respondent’s underlying application. Petitioner’s priority as to the goods identified
in its pleaded registration therefore is established. Respondent, moreover, does not
dispute Petitioner’s claim of priority.12

12 Id.
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F. Likelihood of Confusion
A presumption of validity attaches to a trademark registration, and the party
seeking cancellation must rebut this presumption by a preponderance of the evidence.
W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir.
1994). Section 14(1) of the Trademark Act provides that a cancellation action may be
brought on the ground of likelihood of confusion before a registration is five years old.
The petition before us was filed on December 18, 2015, within five years from the date
the ‘656 registration issued, which was on September 22, 2015.
Our determination under Section 2(d) is based on an analysis of all 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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services, the first two du Pont factors. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
“Not all of the [du Pont] factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In
re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). We
Cancellation No. 92062923
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address each of the du Pont factors in turn for which the parties submitted evidence
or argument. To the extent that any other du Pont factors for which no evidence was
presented may be applicable, we treat them as neutral.
We focus on Petitioner’s pleaded ‘606 registration for the mark TOPICLEAR for
various goods including cosmetics. If we find confusion likely between this mark and
Respondent’s mark for cosmetics, we need not consider the likelihood of confusion
between Respondent’s mark and Petitioner’s other pleaded marks for their respective
goods. On the other hand, if we find no likelihood of confusion between Respondent’s
mark and the mark of the ‘606 registration, we would not find confusion likely
between Respondent’s mark and Petitioner’s other pleaded marks, which are less
similar to Respondent’s mark. In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB
2010).
1. The Goods, Trade Channels and Classes of Purchasers
It is well established that in cancellation proceedings, the similarity of the goods
must be determined on the basis of the goods as identified in the parties’ respective
registrations. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA,
811 F.2d 1490, 1 USPQ2d 1813, 1814 (Fed. Cir. 1987). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard v. Packard Press 62 USPQ2d at 1004; Octocom Sys., Inc. v.
Hous. Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The ‘656 registration identifies cosmetics and the ‘606 registration includes
cosmetics. The goods of the registrations hence are, in part, identical. We presume
Cancellation No. 92062923
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that Petitioner’s and Respondent’s goods will be sold in the same channels of trade
and will be bought by the same classes of customers, because the goods are identical
in part and there are no limitations as to channels of trade or classes of purchasers
in either the application or cited registration. In re Viterra, Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel
in same channels of trade to same class of purchasers). The du Pont factors regarding
the goods, trade channels and classes of purchasers support a finding of a likelihood
of confusion.
2. Strength of Petitioner’s Mark
Turning next to the du Pont factor involving the strength of the prior mark
(Petitioner’s TOPICLEAR mark), the strength of Petitioner’s mark determines its
scope of protection or exclusivity of use. Evidence of use by third parties of similar
marks on similar goods is probative of the ultimate inquiry of likelihood of confusion
only when such use is so extensive that “customers have become so conditioned by a
plethora of such similar marks that customers have been educated to distinguish
between different [such] marks on the basis of minute distinctions.” Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005). See also Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015). “[T]he strength of a mark is not a binary
factor” and “varies along a spectrum from very strong to very weak.” Id. at 1675-76
Cancellation No. 92062923
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(internal citations omitted). “The weaker [the respondent’s] mark, the closer [a
petitioner’s] mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Id. at
1676 (internal citations omitted). See also Palm Bay Imps., 73 USPQ2d at 1693
(“Evidence of third-party use of similar marks on similar goods is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection.”). “In
determining the strength of a mark, we consider both its inherent strength based on
the nature of the mark itself and its commercial strength, based on the marketplace
recognition value of the mark.” Am. Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); (citing Tea Board of
India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and J. Thomas
McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (4th ed.
2011) (“The first enquiry focuses on the inherent potential of the term at the time of
its first use. The second evaluates the actual customer recognition value of the mark
at the time registration is sought or at the time the mark is asserted in litigation to
prevent another’s use.”)).
Respondent submitted 11 third-party registrations for marks having CLEAR,
CLAIR and TOPI13 as components, for cosmetics or goods which fall into the definition
of cosmetics, taken in the broadest sense.14 Two registrations are for marks

13 Registration No. 4227269 for TROPICADERM has limited probative value because
Petitioner’s mark does not contain the term TROPIC.
14 “Cosmetic” (as a noun) is defined as “something that is cosmetic: such as a : a cosmetic
preparation for external use.” “Cosmetic” (as an adjective) is defined on the same webpage as
“of, relating to, or making for beauty especially of the complexion : beautifying.”
https://www.merriam-webster.com/dictionary/cosmetics. (The Board may take judicial notice
Cancellation No. 92062923
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containing TOPIC (TOPICREM (stylized) and TOPICARE).15 In addition, Mr. Cesar
identified approximately fifteen third-party uses supported by webpages from
guesso.com and walgreens.com for marks having the terms CLEAR, CLAIR(E), and
TOPIC for various skin creams and soaps.16 Examples are CLAIR AND WHITE,
IMMEDIAT CLAIRE, DERMACLAIR, CLEAR, CLEAR QUICK and EXTRA CLAIR.
Only one third-party use included the term TOPIC, the mark TOPIC BODY
CREAM.17 None of the third-party registrations and uses are identical to Petitioner’s
TOPICLEAR mark, and none contain both CLEAR and TOPI (or TOPIC). Some
consumers may view Petitioner’s mark as a telescoped version of TOPIC and CLEAR.
We hence find that Respondent has not established that Petitioner’s mark is
commercially weak.
As for the inherent strength of the mark, CLEAR is a suggestive term for
cosmetics, suggesting a result achieved by use of the goods. CLEAR appears with
some frequency as a trademark for cosmetics in the evidence. TOPI (or TOPIC) is
likely derived from the term “topical,” defined as “designed for or involving local

of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006)).
Respondent submitted Registration No. 1115493 for the mark NUTRI-CLEAR for
“cleansing facial cream” – we have considered this registration because the definition of
“cosmetic” encompasses such goods.
15 Registration Nos. 4553897 and 1937302.
16 44 TTABVUE 13-25.
17 Cesar Depo. at 18, 44 TTABVUE 20.
Cancellation No. 92062923
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application and action (as on the body).”18 Considered as a whole, the mark has some
suggestiveness.
In sum, the evidence of use submitted by Respondent does not establish that
TOPICLEAR is commercially weak, but conceptually, the mark is not an arbitrary
one. We find Petitioner’s mark to be a suggestive mark.
3. Sophistication/Conditions Under Which and Buyers to Whom Sales are
Made

The degree of care that potential purchasers will exercise in purchasing cosmetics
affects how carefully purchasers will consider the marks at issue. The guesso.com
webpage indicates that “Dermaclair Beauty Cream for Dark Skin” retails for $3.50 a
tube.19 At this price point, we find that the goods are subject to impulse purchase by
ordinary users of cosmetics and weigh the du Pont factor regarding consumer
sophistication and care in favor of finding a likelihood of confusion.
4. Similarity/Dissimilarity of the Marks
We now consider the parties’ marks, and compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Palm Bay Imps. 73 USPQ2d at 1692. 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

18 https://www.merriam-webster.com/dictionary/topical. We take judicial notice of this
definition.
19 Exh. 5 to Cesar Depo., 45 TTABVUE 7.
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1975). The Federal Circuit has stated that “[t]he proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., 101
USPQ2d at 1721 (citation omitted). While marks must be compared in their entireties
and the analysis cannot be predicated on dissecting the marks into their various
components, different features may be analyzed to determine whether the marks are
similar. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430
(TTAB 2013) (citing Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105
USPQ 266, 268 (CCPA 1955)). Similarity in any one of the elements of sound,
appearance, meaning, or commercial impression is sufficient to support a
determination of likelihood of confusion. See, e.g., Krim-Ko Corp. v. Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968); In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1089 (TTAB 2016); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511,
1519 (TTAB 2009).
Petitioner’s mark is TOPICLEAR and Respondent’s mark is TROPIC CLAIR
PLUS. TOPIC and TROPIC, the initial terms in each mark, look and sound similar,
differing only through the additional letter “R.” CLEAR and CLAIR begin with the
Cancellation No. 92062923
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same consonant and present three of the same letters in the same position. Further,
the letter “C” can be pronounced as a single consonant in both marks; the terminal
letter “C” in TROPIC need not be pronounced distinctly from the initial letter “C” in
CLAIR. There are differences, however; the letter “R” is noticeable in Respondent’s
mark, appearing towards the beginning of the mark, and differentiates the sound of
the first terms in the marks. “CLEAR” sounds and looks different from “CLAIR” in
the second term of each mark, and Respondent’s mark includes the term PLUS.
With regard to the meaning and commercial impression of the marks, Petitioner’s
mark is a composite of the terms TOPIC or TOPI and CLEAR. TOPIC and TOPI can
be associated with the term “topical,” which suggests application to the skin;
cosmetics are applied to the skin. CLEAR, in the context of cosmetics, connotes
blemish-free skin. Petitioner’s advertising touts these qualities in its products,
stating they “are perfect for an even skin tone, helping eliminate spots and
blemishes”; “gently fades dark spots, brown patches, marks, scars, and other
blemishes”; and “[c]leanse the skin of impurities.”20
Turning to Respondent’s TROPIC CLAIR PLUS mark, it is composed of three
terms. The first term, TROPIC, connotes a region of the earth, i.e., the tropics.21 Mr.
Cesar, Respondent’s Vice President, testified that he chose “tropic” while driving in

20 39 TTABVUE 6-9.
21 “Tropic” is defined as “of, relating to, or occurring in the tropics” and “either of the two
parallels of terrestrial latitude at a distance of about 23 ½ north or south of the equator where
the sun is directly overhead when it reaches its most northerly or southerly point in the sky.”
https://www.merriam-webster.com/dictionary/tropic.We take judicial notice of this definition.
Cancellation No. 92062923
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Jamaica and thought “it will be nice because it remind me of the tropical [sic].”22 The
third term PLUS has a highly suggestive meaning, i.e., “having, receiving, or being
in addition to what is anticipated.”23
The parties dispute the meaning of the second term, CLAIR. Although the ‘656
registration provides that the term translates as “clear,” Mr. Cesar testified that “it
sounds like the name” and means “My Clair.”24
We are not persuaded that consumers will stop and translate the term CLAIR in
Respondent’s mark.25 Mr. Cesar testified “Clair” “sounds like the name” and
Petitioner has not rebutted his testimony. Also, CLAIR is positioned between two
English language terms, and it has been held that when marks consist of both foreign
and English words, the mark may not be translated. See French Transit, Ltd. v.
Modern Coupon Sys., Inc., 818 F. Supp. 635, 29 USPQ2d 1626 (S.D.N.Y. 1993)
(involving LE CRYSTAL NATUREL for body deodorant, finding “the doctrine does
not apply when a mark is a combination of foreign and english words” (citing In re
Johanna Farms, 8 USPQ2d 1408, 1413 (TTAB 1988) (combination of the French
article “La” with the english “Yogurt” changed the commercial impression of the mark

22 44 TTABVUE 8-9.
23 https://www.merriam-webster.com/dictionary/plus. We take judicial notice of this
definition of “plus.”
24 44 TTABVUE 33.
25 The doctrine of foreign equivalents is applicable “when it is likely that the ordinary
American purchaser would stop and translate the foreign word into its English equivalent.
... The ‘ordinary American purchaser’ includes ‘all American purchasers, including those
proficient in a non-English language who would ordinarily be expected to translate words
into English.” In re Weiss Watch Co., 123 USPQ2d 1200, 1204 (TTAB 2017) (citations
omitted).
Cancellation No. 92062923
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as a whole such that La Yogurt was protectable), and In re Universal Package Corp.,
222 USPQ 344, 347 (TTAB 1984) (when a mark consists of all foreign components
translation of the entire mark by the consumer is more likely to take place than when
only part of the mark is in a foreign language)). In addition, there is no single
translation that is applicable in the context of cosmetics; “clair” can also be translated
as “bright” and “light” (“a light color”).26 See In re Sarkli, Ltd., 721 F.2d 353, 220
USPQ 111, 113 (Fed. Cir. 1983) (having no exact translation, “‘repechage’ is not the
equivalent of ‘second chance’ in English”). CLAIR and CLEAR have very different
meanings if consumers will not make a translation.
Even if certain consumers translate the term, we still find the marks dissimilar
because the two remaining terms in Respondent’s mark distinguish the marks in
meaning and commercial impression. TROPIC, the first term in Respondent’s mark,
has a different meaning than the prefix “topi” or the word “topic,” forming the first
portion of Petitioner’s mark. It has been said that the first term in a mark is often its
dominant portion, see Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”), see also, Palm Bay Imps.,
Inc., 73 USPQ2d at 1692; Century 21 Real Estate, 23 USPQ2d at 1700, and the
meaning of these terms are very different. As for the third term PLUS, although a
highly suggestive term, it too must be considered because “no part of the mark can be

26 https://dictionary.cambridge.org/dictionary/french-english/clair. We take judicial notice of
these translations from French.
Cancellation No. 92062923
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ignored in comparing the marks as a whole.” O-M Bread Inc. v. U.S. Olympic Comm.,
65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (internal citation omitted).
Petitioner argues, “[t]aking into consideration the trade dress and near identity of
the packaging of the competing products, it should be clear that confusion as to source
by the consumer is likely.”27 This argument is of no avail to Petitioner in this
cancellation proceeding; we must determine likelihood of confusion based on the
registered standard character marks, and not on the current trade dress, which is not
part of the marks. See Anderson, Clayton & Co. v. Christie Food Prods. Inc., 4
USPQ2d 1555, 1557 (TTAB 1987) (“the Board does not have jurisdiction to consider
trade dress matters which are not part of the mark sought to be registered and must
determine the question of likelihood of confusion based on the mark sought to be
registered as depicted in the drawing since trade dress can be changed at any
time.”).28
In view of the foregoing, we find that the marks dissimilar in meaning and
commercial impression, and that the dissimilarities in meaning and commercial
impression outweigh any similarities in sound and appearance. The du Pont factor
regarding the marks therefore weighs against a finding of likelihood of confusion.

27 Petitioner’s brief at 9, 45 TTABVUE 13.
28 Petitioner’s argument may carry more weight in an infringement action in district court
than before the Board.
Cancellation No. 92062923
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5. Absence of Actual Confusion, Time and Conditions of Concurrent Use,
Extent of Potential Confusion

Next, Respondent asserts that three du Pont factors, the seventh, eighth and
twelfth du Pont factors, favor Respondent because there have been no instances of
actual confusion since Respondent began selling its goods in 2015, over three years
prior to trial.29 The seventh factor is “the nature and extent of any actual confusion;”
the eight factor is “the length of time during and the conditions under which there
has been concurrent use without evidence of actual confusion;” and the twelfth factor
is “the extent of potential confusion.” du Pont, 177 USPQ at 567.
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by the parties of their marks for a
significant period of time in the same markets. Citigroup Inc. v. Capital City Bank
Group, Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
1253 (Fed. Cir. 2011); Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). In other words, for the absence of actual confusion to be probative, there must
have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery
Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the
absence of actual confusion depends upon there being a significant opportunity for
actual confusion to have occurred); Central Soya Co., Inc. v. N. Am. Plant Breeders,
212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable

29 Respondent’s Brief at 11, 48 TTABVUE 16. Mr. Graterol did testify that he had heard
comments from distributors indicating confusion but did not provide any details. 38
TTABVUE 46-47. His statement has limited probative value.
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period of time might well suggest that the likelihood of confusion is only a remote
possibility with little probability of occurring”).
Respondent does not cite to any evidence in the record supporting its contention
that the marks have been used concurrently for three years, and does not cite to any
evidence establishing that use of its mark began in June 2015. We have not located
any evidence which we may consider establishing the dates of concurrent use of the
marks.30
Mr. Graterol has testified, however, that Petitioner and Respondent attend the
same trade shows31 and that several of Petitioner’s customers have had Respondent’s
TOPICLEAR branded goods on shelves or in warehouses.32 Petitioner’s Exhibit 15 is
a photograph taken by Mr. Graterol of shipping cartons at the Beauty New King store
in New York on a pallet labeled with Respondent’s mark next to shipping cartons
labeled with Petitioner’s mark.33 Neither party, however, provided detailed
information about the volume of Respondent’s sales, or locations where Respondent
sells and advertises its goods. Additionally, Respondent only mentions the eighth and
twelfth factors in its brief; it does not discuss them.
For these reasons, these three factors are neutral in our analysis.

30 See Trademark Rule 2.122(b)(2) (“The allegation in an application for registration, or in a
registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of
use of a mark must be established by competent evidence.”).
31 38 TTABVUE 25.
32 38 TTABVUE 37-38.
33 39 TTABVUE 34.
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6. Fame
Petitioner mentions the factor of fame in its brief, but does not discuss the factor.
Fame “may be measured indirectly by the volume of sales and advertising
expenditures in connection with the [goods] sold under the mark, and other factors
such as length of time of use of the mark; widespread critical assessments; notice by
independent sources of the [goods] identified by the mark []; and the general
reputation of the [goods].” Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d 1043, 1056 (TTAB 2017). The record, thin as it is, does not persuade us that
Petitioner’s mark is a famous mark. We find the du Pont factor of fame to be neutral
on the question of likelihood of confusion.
7. Bad Faith
Evidence of a defendant’s bad faith adoption of a mark is relevant to the likelihood
of confusion analysis. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent to trade
on the goodwill of another is a factor to be considered....”). Petitioner points out that
Respondent’s packaging resembles Petitioner’s packaging, most notably the color, the
layout and the designation “#1” in a concentric circle design, and asserts that
Respondent adopted its mark in bad faith with an intent to cause confusion. There
are indeed similarities in the packaging. Respondent’s founder and Vice-President,
Mr. Cesar, however, disavowed any responsibility for the similarities in the
packaging, stating:
Q. And who designed that package, if you know?
A. My designer.
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Q. And have you seen my client’s packaging?
A. I’ve seen your client’s packaging.
Q. Are you familiar with the fact that the package of my client also includes a
circle with number one in it?
…
A. Never paid attention to that until you bring it up to me. I can tell you, if you
look at my packaging, we have our own logo, if you see.
…
A. That’s what was instructed to put on the packaging, my logo. Yes.
Q. Now, there’s also the circle with the number one on it, as well; is that correct?
A. That’s the designer. I don’t know.
Q. You don’t know?
A. I see it, but he wasn’t instructed to put it on it.34

On re-direct examination, Mr. Cesar stated that he had not seen the TOPICLEAR
products until after his company’s product was on the market.35
There is no corroborating testimony from Mr. Cesar’s designer or any other
individual regarding Respondent’s product packaging. Petitioner, however, has not
offered any evidence countering Mr. Cesar’s testimony. We therefore find that
Petitioner falls short of establishing bad faith in Respondent’s adoption of its mark.
8. Conclusion
We have considered all of the parties’ arguments and evidence, including any
arguments not specifically discussed in this opinion. As noted earlier in this opinion,
it is Petitioner’s burden to establish the case for cancellation by a preponderance of
the evidence. Cerveceria Centroamericana, 13 USPQ2d at 1309.
We have found that there are important differences in the marks, particularly in
meaning and commercial impression, and that Petitioner’s mark is a suggestive mark

34 44 TTABVUE 36-37.
35 44 TTABVUE 47-48.
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and not entitled to as broad a scope of protection as a more arbitrary mark. These
factors outweigh the other factors which favor a finding of likelihood of confusion. We
therefore conclude that confusion is not likely between Petitioner’s and Respondent’s
marks.
Decision: The petition for cancellation is dismissed.