Woodridge Labs, Inc.

Trademark Trial and Appeal Board

Aug 28, 2006

No. 76636010 (T.T.A.B. Aug. 28, 2006)

Mailed: August 28, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Woodridge Labs, Inc.
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Serial No. 76636010
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Deborah A. Wilcox and Melinda M. Kline of Baker & Hostetler
for Woodridge Labs, Inc.

Paul C. Crowley, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
____________

Before Seeherman, Walters and Kuhlke, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Woodridge Labs, Inc. has filed an application to
register on the Principal Register the mark OPTIMOIST for
“hair care preparations, namely, shampoos,” in International
Class 3.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 76636010, filed April 14, 2005, based on use in commerce,
alleging first use and use in commerce as of October 6, 2004.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76636010
2
§1052(d), on the ground that applicant’s mark is likely to
cause confusion with the mark OPTI MOISTURE, registered for
“skin cleansing, moisturizing and firming creams, lotions
and liquids, face masques, topically applied nonmediated
(sic) lotions, creams and masques to reduce fine lines and
wrinkles on the face and skin,” in International Class 3.2
The registration includes a disclaimer of MOISTURE.
Applicant has appealed and filed a brief, but did not
request an oral hearing. The examining attorney has also
filed a brief.
The examining attorney contends that the appearance and
sound of the two marks are similar because both marks begin
with the term OPTI followed by MOISTURE in the registered
mark, and MOIST, a form of the word MOISTURE, in the
applied-for mark. The examining attorney submitted
definitions from www.msn.encarta.com of MOISTURE as
“wetness, especially as droplets of condensed or absorbed
liquid, or in a vapor” and of MOIST as “damp: slightly wet,”
and argues that these terms have essentially the same
meaning and, thus, the connotations and commercial
impressions of the two marks are substantially the same. In
support of her position that applicant’s and registrant’s
goods are closely related, the examining attorney submitted
copies of fourteen third-party registrations that include,

2 Registration No. 2447097, issued on April 24, 2001 to Thibiant
Serial No. 76636010
3
among the identified goods for a single mark, both shampoos
and hair care products and face and skin care products such
as lotions, masques and creams. She argues that the items
are all personal care products that would be marketed
through the same trade channels to the same class of
purchasers, namely, general consumers.
Applicant’s principal contentions are that the marks
are different because the registered mark consists of two
words,3 whereas applicant’s mark has merged two words and
is, thus, an arbitrary, coined phrase; that the goods are
different and would appear in “physically distinct and
distant locations on a store shelf” (brief, p. 2); that the
trade channels of the products are different because
applicant’s product is marketed on television and used by
various celebrities; that the buyers of applicant’s product
are “sophisticated, business users familiar with the various
hair care products in general” (brief, p. 3); that
registrant’s product and mark are not generally known to the
public, whereas, applicant’s product is marketed by Ellin
Lavar, a famous professional hair designer; and that there
has been no actual confusion.

International, Inc.

3 Applicant also contends, in error, that the marks are different
because the registered mark is stylized; however, the registration for
the cited mark contains a standard character claim and, thus, is not
registered in a stylized form.

Serial No. 76636010
4
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Serial No. 76636010
5
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
In our case, both marks begin with the term OPTI
followed by MOIST or MOISTURE. The examining attorney has
provided sufficient evidence via dictionary definitions to
establish that MOIST is essentially another form of the word
MOISTURE and that it has essentially the same meaning. The
words MOIST and MOISTURE, and, thus, the marks as a whole,
differ only by three letters, the “URE” at the end of the
registered mark. The marks are not distinguished by the
mere fact that the registered mark consists of two words and
applicant’s mark is a single word. Therefore, we conclude
that the sound, appearance, connotation and overall
commercial impressions of the marks OPTIMOIST and
OPTIMOISTURE are substantially similar.
Turning to consider the goods or services involved in
this case, we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
Serial No. 76636010
6
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein.
The products identified herein all relate to personal
hygiene, and, therefore, are likely to be purchased and used
by the same classes of purchasers. See, Ferdinand Mulhens
v. Sir Edward Ltd., 214 USPQ 298 (TTAB 1981); and Guerlain,
Inc. v. Richardson-Merrell Inc., 189 USPQ 116 (TTAB 1975).
Serial No. 76636010
7
And, while there is no per se rule governing likelihood of
confusion in cases involving such items, the record includes
specific evidence of a significant number of third-party
marks registered for goods including both shampoo and face
and body lotions, masques and creams.4 Although third-party
registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
such registrations nevertheless have some probative value to
the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988). It is very likely that purchasers would
use face creams, lotions and masques and shampoos as part of
the same “beauty” regimen. We find the third-party
registrations adequate to establish that the goods involved
in this case may come from a single source.
Notwithstanding the specific differences between
shampoo and skin and face care products, we find them to be
sufficiently related for the reasons stated above, that,
when sold under similar marks, purchasers are likely to be

4 All of the third-party registrations in the record include allegations
of use in commerce.

Serial No. 76636010
8
confused. Moreover, despite applicant’s arguments about its
particular trade channels or its particular customers, there
are no limitations on the trade channels or the classes of
purchasers of the respective products. Thus, we must assume
that these goods would be sold through all ordinary channels
of trade for such goods. Since both applicant’s and
registrant’s identified products are personal care products
used to enhance one’s personal appearance, both types of
products can be sold through the same channels of trade,
e.g., drugstores, and to the same class of purchasers.
These purchasers would include ordinary consumers who are
not likely to exercise more than a normal degree of care in
making their purchases and who, indeed, may purchase these
items on impulse.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, OPTIMOIST, and registrant’s mark, OPTI MOISTURE, their
contemporaneous use on the identified goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods. We do not find applicant’s
arguments to the contrary to be persuasive.
Decision: The refusal under Section 2(d) of the Act is
affirmed.