UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/625583
APPLICANT: For Life Products, Inc.
|
|
|
CORRESPONDENT ADDRESS: |
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ON APPEAL
|
|
MARK: REVITALIZE
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 1793-200023/
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Applicant has appealed the Trademark Examining Attorney's Final Refusal to register the trademark “REVITALIZE” on the grounds of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
Applicant applied for registration of the trademark “REVITALIZE” for “skin care products, namely, skin moisturizers, exfoliating creams, anti-aging creams, anti-wrinkle creams, body creams, non-medicated scar and stretch mark creams, wrinkle line reducer creams, and non-medicated eye serums.” Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), because of the likelihood of confusion with Registration No. 2874189 “REVITALIZA” for “hair care products, namely, shampoos, conditioners, sculpting lotion, sculpting foam, gels, sprays and waving and setting lotions.” This appeal, filed on September 15, 2006, followed the Examining Attorney's Final Refusal on this issue dated March 8, 2006.
II. ARGUMENT
THE MARKS OF APPLICANT AND REGISTRANT ARE CONFUSINGLY SIMILAR AND THE GOODS OF THE PARTIES ARE CLOSELY RELATED SUCH THAT THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.
The Court in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d) of the Trademark Act. Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In this case, the following factors are at issue: similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods.
Any doubt as to the issue of likelihood of confusion must be resolved in favor of registrant and against applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. See In re Hyper Shoppes (OHIO), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
A. THE MARKS ARE HIGHLY SIMILAR
The marks must be compared for similarities in sound, appearance, meaning or connotation. E.I. du Pont de Nemours, 177 USPQ at 563. Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The marks of the applicant and registrant are highly similar because they are nearly identical in sound and appearance and they convey the same overall commercial impression in relation to the goods. Both marks are comprised of a single term containing 10 letters. The first 9 letters are identical. The sole difference between the two marks lies in the ending letter. Because they differ by only one letter, they are very close in appearance and sound.
Furthermore, the marks create similar commercial impressions in relation to the goods. The applicant submits a dictionary definition of the term “revitalize,” to which examining attorney has no objection. Based on this dictionary definition, both marks are suggestive of goods that will give new life or new vitality or vigor to skin or hair, i.e. goods that will revitalize your hair or your skin.
The applicant argues that the spelling difference between the two marks is significant because it lends different connotations to the marks. The applicant argues that its mark “REVITALIZE” is a recognized word in the English language, the definition of which is provided, whereas the registered mark “REVITALIZA” has neither a definition in the English language nor a corresponding translation in a foreign language. Thus, the applicant contends that the connotations of the marks are different.
Although the applicant does not explicitly discuss what connotation it believes the registered mark supposedly has, it appears the applicant is arguing either that the mark conveys the impression of a completely made-up, fanciful, arbitrary term with no particular meaning since it has no dictionary definition or that the mark does in fact have a suggestive meaning in connection with the goods that is different from that of its mark.
In either case, the applicant is incorrect in assuming that the lack of a dictionary definition of the registered mark is equivalent to either a lack of meaning or to a commercial impression different from applicant’s mark. While it may be true that there is no dictionary definition of the term “REVITALIZA,” considering the fact that 9 out of the 10 letters are identical in appearance and sound to those in the word “revitalize” commonsense and logic dictate that the commercial impression suggested by the registered mark is in fact that of the term “REVITALIZE.”
Thus, consumers are highly unlikely to view the mark as completely fanciful, arbitrary, or made-up with either no meaning or as connoting something other than the term “revitalize.” This is true especially in consideration of the nature of the goods offered by the two parties. Because they are cosmetic beauty goods for skin and hair, it is desirable by consumers for such goods to suggest they can renew and restore life, vitality, or vigor to the skin and hair.
Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
B. THE GOODS ARE RELATED
AND TRAVEL IN THE SAME TRADE CHANNELS SUCH THAT SOURCE CONFUSION UNDER THE LANHAM ACT
IS LIKELY.
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i). The fact that the goods and services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.
The goods of the applicant and registrant are closely related because they are all types of personal cosmetic beauty products that travel in the same channels of trade. The evidence previously submitted in the first Office Action of July 27, 2005 clearly supports this.
Specifically, in that prior Office Action, the examining attorney attached printouts of web pages from the Internet using the Google® search engine that show two beauty/cosmetic retail entities offering a variety of skin care and hair care products, including those listed in the identification of goods of both parties, under the same trademark. The first two web page printouts are from LANCOME and the second two are from AVEDA. The LANCOME web page printouts show the term “LANCOME” on a bottle of hair conditioner and on a container of eye contour lifting, firm, and anti-wrinkle cream. In addition, on the same page as the cream, there is a product list for skin care, which includes cleansers, toners, and moisturizers. The AVEDA web page printouts show the term “AVEDA” on a bottle of hairspray and with a body bath bar and flower water. Also, the pages have a product list that includes shampoos, conditioners, skin cleaners and hydrators. Printouts of pages downloaded from the Internet are admissible as evidence of information available to the general public. TMEP §710.01(b). In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999.
The examining attorney also provided 6 third-party registrations showing that the hair care preparations are marketed under the same trademarks as those for skin care products. The relevant portions of the third-party registrations, which demonstrate the related nature of the goods read as follows:
U.S. Registration No. 2978091 PURE CLEAN for hair shampoos and skin lotions
U.S. Registration No. 2978294 INNERSENSE for hair care and hair styling preparations and facial creams, cleansers, and scrubs
U.S. Registration No. 2978475 TATTLETALES for skin exfoiliators, clarifiers, moisturizers, and shampoo, conditioner, and hair rinse
U.S. Registration No. 2979695 CLINIQUE HAPPY TO BE for hair shampoos and conditioners and salt scrubs for skin, body creams, cleansers, and lotions
U.S. Registration No. 2979769 FINE EARTH for skin lotions and shampoos
U.S. Registration No. 2959941 PURAVERA for skin creams, oils, and milks, face lotions, beauty masks and anti-wrinkle creams, and hair lotions and creams
Third-party registrations have probative value to the extent that they serve to suggest that the goods listed therein, are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
Based on this evidence it is clear that single sources offer the skin and hair products of the applicant and registrant under the same trademarks in the same channels of trade. Therefore, for example, a consumer seeking to beautify herself can go to a single Internet retail website such as that offered by LANCOME and purchase various beauty products, such as LANCOME shampoo and LANCOME skin moisturizer.
The applicant argues in essence that the goods are very different, that skin care products have “nothing to do” with hair care products and that the goods are therefore marketed to different consumers. Appellant’s brief p. 4. It states that an ordinary consumer encountering its mark on exfoliating cream and the registered mark on shampoo “would not think that the two marks would be connected. Appellant’s brief p. 4.
The examining attorney agrees that skin care products are different from hair care products. Clearly, they are used on different parts of the body. Nonetheless, both types of goods are in the nature of personal beauty care products, which is why the same class of consumers would buy them in the same channels of trade from the same sources.
The applicant appears to confuse relatedness of goods as to function with relatedness of goods as to source. Again, the goods are obviously different and serve different specific purposes. However, the fact that the goods and services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.
Therefore, just because exfoliating creams are not related to shampoos in function does not automatically mean that they are not commercially related as to source. Undoubtedly, there are sources that only offer skin care products or only hair care products. Nonetheless, as seen by the evidence submitted by examining attorney, single sources of beauty and cosmetic products commonly offer a wide range of products for various parts of the body, including skin and hair.
An analogous case is In Re American Beauty Products Company, Inc. 223 USPQ 828 (TTAB 1984). In that case, the Board found "permanent wave preparations, namely permanent wave hair solution; permanent wave hair neutralizing solution; permanent wave hair treatment; curl activator; curl sheen; hair shampoo; and permanent wave protective hair gel" related to "artificial fingernail kit containing simulated fingernails, adhesive and buffer."
In determining that the goods were related, the Board stated:
As for the goods, while they are plainly for different purposes, registrant's for fingernails and appellant's for hair care, both are for the beautification of the body, are primarily directed to the same class of purchasers, i.e. women, and are sold in the same channels of trade, i.e. drug stores, personal beauty care sections of department stores, grocery chains, discount outlets, etc. and beauty shops. Id at 830
The Board also referenced Clairol Inc. v. Save-way Industries, Inc., 211 U.S.P.Q. 223 (S.D. Fla. 1980) [THE NAIL CENTER for fingernail and toenail manicuring devices held infringed by THE SKIN WORKS for facial care devices.]; In re Pierre Fabre S.A., 188 U.S.P.Q. 691 (TTAB 1975) [PEDI-RELAX for cosmetic preparations, namely cremes and lotions for the feet having skin softening, antiperspirant deodorant and skin soothing properties held likely to be confused with RELAX for antiperspirant and deodorant; fact that products are different and intended for different areas of the body held not persuasive in view of the close relationship of the toiletries which would be sold through the same channels of trade and purchased by the same class of purchasers.]. Id at 831
Consumers encountering the mark “REVITALIZE” for skin care products and “REVITALIZA” for hair care products are reasonably likely to believe all the goods emanate from a single source. The marks are highly similar in sound and appearance and the registered mark conveys the same suggestive commercial impression as that of the applicant’s mark. Furthermore, the goods are very closely related because they are all types of beauty products commonly offered by single sources in the same channels of trade to the same class of consumers.
III. CONCLUSION
For the foregoing reasons, the refusal to registration under Section 2(d) of the Trademark Act should be affirmed.
Respectfully submitted,
/Jean H. Im/
Trademark Attorney
Law Office 101
571-272-9303
Managing Attorney
Law Office - 101