Averi Skye Enterprise, LLC

Trademark Trial and Appeal Board

Jun 22, 2020

87830306 (T.T.A.B. Jun. 22, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Averi Skye Enterprise, LLC
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Serial No. 87830306
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Rosezena J. Pierce of RJ Pierce Law Group PC,
for Averi Skye Enterprise, LLC.
Karanendra S. Chhina, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Cataldo, Wellington, and Johnson,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Averi Skye Enterprise, LLC (“Applicant”) seeks registration on the Principal
Register of the mark HONEYCOMB WAXING STUDIO (in standard characters,
WAXING STUDIO disclaimed) for “body waxing services; body waxing services for
hair removal in humans; body waxing services for the human body; cosmetic hair
removal by means of waxing; depilatory waxing” in International Class 44.1

1 Application Serial No. 87830306 filed on March 12, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as January 1, 2018.
Serial No. 87830306
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used
in connection with the services identified in the application, so resembles the
following registered mark on the Principal Register:

(SALON disclaimed) for “hair salon services” in International Class 44,2 as to be likely
to cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed.
We reverse the refusal to register.
I. Likelihood of Confusion
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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for

2 Registration No. 5007348, issued July 26, 2016. The mark is described in the registration
as “consist[ing] of the wording HONEYCOMB SALON in stylized lettering. The letter Y is
replaced by a pair of scissors. The word SALON appears written to the lower right corner of
HONEYCOMB.”
Serial No. 87830306
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which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination.”). In any likelihood of confusion
analysis, however, two key considerations are the similarities between the marks and
the relatedness of the goods and/or services. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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/or services] and differences in the marks.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods [and/or services].’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
Serial No. 87830306
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A. Similarity of the marks
Under the first DuPont factor, we compare Applicant’s mark and the cited
registered mark “in their entireties as to appearance, sound, connotation and
commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (quoting DuPont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005).
Here, both marks begin with the literal term, HONEYCOMB. Although we must
consider the marks as a whole, we point out that the additional wording in the marks,
WAXING STUDIO in Applicant’s mark and SALON in the cited mark, is highly
descriptive if not generic and has been disclaimed. See, e.g., In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the
disclaimed generic term “CAFE,” was the dominant portion of the mark THE DELTA
CAFE).
Despite the similarity of the marks based on the common term HONEYCOMB,
we note that this same term will likely be perceived differently by consumers when
viewed in the entirety of each mark and in the context of the services. That is, when
HONEYCOMB WAXING STUDIO is viewed in the context of body waxing services,
the term “honeycomb” will be understood as a play on the beeswax in actual
honeycombs.3

3 While this may be a matter of public knowledge, Applicant introduced Internet evidence
describing the manufacture of beeswax and honeycomb structures. Request for
Reconsideration, TSDR pp. 28-31.
Serial No. 87830306
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The HONEYCOMB in Registrant’s mark, , almost appears
as two separate words HONEY and COMB, separated by the scissors (forming the
letter “Y”) design. In the context of hair salon services, consumers will likely perceive
a double entendre involving the composite words “honey” and “comb” and their
individual meanings in the context of hair styling. In this regard, Applicant
submitted evidence showing that honey can be used as an ingredient to promote
healthier hair, e.g., hair masks, and is found in various hair treatment products.4 The
word comb and the scissors design are heavily suggestive of Registrant’s hair styling
services.
With the aforementioned differences in connotation and commercial impression in
mind as well as the fact that HONEYCOMB is the first literal element of both marks,
we find the marks are overall slightly more similar than not. In other words, the
latter and more general point of similarity outweighs the different suggestive
meanings attributed to each mark.
Accordingly, the DuPont factor involving the similarity of the marks weighs
slightly in favor of finding a likelihood of confusion.

Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number in the .pdf version of the TSDR records. References to the briefs and other
materials in the appeal record refer to the Board’s TTABVUE docket system.
4 Id., pp. 56-104 (articles describing benefits of honey for healthy hair, recipes for honey hair
masks, and advertisements for hair treatment products containing honey).
Serial No. 87830306
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B. Weakness of Common Element HONEYCOMB

Under the sixth DuPont factor, we consider third-party use evidence of the same
or similar term in connection with the same or similar services for purposes of
determining commercial weakness of that term. Palm Bay Imps. v. Veuve Clicquot,
73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods
[or services] is relevant to show that a mark is relatively weak and entitled to only a
narrow scope of protection.”). “[E]xtensive evidence of third-party use and
registrations is ‘powerful on its face, even where the specific extent and impact of the
usage has not been established.” Jack Wolfskin v. New Millennium Sports, 116
USPQ2d at 1136 (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The purpose of introducing such evidence
is “to show 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 bases of minute distinctions.”’ Palm Bay Imps. v. Veuve Clicquot, 73
USPQ2d at 1693 (citation omitted).
In this regard, Applicant argues:5

There is a significant number of entities that have sought to adopt or use
the term “honeycomb” in their business names in connection with salon
services. Applicant submitted evidence in the record of such third-party
uses to show that consumers have become so conditioned by the plethora
of HONEYCOMB marks that consumers have been educated to distinguish
between different such HONEYCOMB marks on the bases of minute
distinctions.

Specifically, Applicant asserts that it “submitted evidence in the record of
screenshot[s] of at least thirty-five third-party websites using the term
Serial No. 87830306
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HONEYCOMB in connection with salon services,” as well as “several
registrations for HONEY-formative marks in view of the use in connection with
the third-party websites, to show that the term HONEYCOMB, with its
association to ‘honey’ generally, is highly suggestive of salon services.”6
Applicant thus contends that “the scope of protection afforded to Registrant’s
HONEYCOMB Salon and design mark, a highly suggestive mark, is necessarily
narrow and confusion is not likely to result from the use of Applicant’s mark,
especially due to the difference in services.”7
The Examining Attorney acknowledges that Applicant “did submit 35
printouts of websites in its Request for Reconsideration where the provider of
the ‘salon’ services apparently used HONEYCOMB in its mark for such services
to evidence weakness of this wording for the registrant’s ‘salon’ services.”8 The
Examining Attorney further notes that “[t]aking this at face value, this at most
proves that HONEYCOMB is arguably diluted in the marketplace for ‘salon
services’ and should, therefore, be entitled to narrower protection vis-à-vis other
marks containing same for such ‘salon’ services. A standard and reasonable
dilution argument.”9 However, the Examining Attorney takes issue with any
attempt to link the evidence with a showing of weakness of the term

5 7 TTABVUE 18.
6 Id.
7 Id.
8 9 TTABVUE 15.
9 Id.
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HONEYCOMB in connection with waxing services, like those described in the
application. “Even if HONEYCOMB is weak for ‘salon’ services there is nothing
in the record that it is also so for ‘waxing’ services and should also be afforded
narrower analysis for marks containing same.”10
We further note that the Examining Attorney provides the following
thoughts in a footnote:11
Perhaps if the applicant’s argument would have been ‘that while the
applicant’s and registrant’s services are indeed provided by the same
source, HONEYCOMB is weak in the marketplace for both such
services (as supported by the evidence) and should, therefore, should
be construed narrowly in regards to use on both,’ then the analysis
may have been different, but that is not the case here.

We have reviewed the record and indeed, as Applicant and the Examining
agree, it includes printouts from over 35 different third-party websites showing
the term HONEYCOMB used in connection with hair salons.12 These hair salons
are located in various parts of the country.
The following is a sampling of excerpted images from 10 of the websites:
1. HONEYCOMB Salon “full service hair & beauty salon in Weatherford
[Oklahoma] Area” (www.honeycomb.salon).13

10 Id. at 15-16.
11 Id. at 16, FN. 4.
12 Internet printouts attached to Applicant’s Request for Reconsideration, filed August 27,
2019. We note that a few of the websites show use of the term HONEYCOMB on hair-related
goods or advertise hair salons located outside the United States, e.g., in Edmonton. These
were not considered for purposes of showing weakness in the United States of the term in
connection with hair salon services.
13 Id., TSDR p. 107.
Serial No. 87830306
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2. “HONEYCOMB SALON … a private salon . . . in Deer Park, Illinois”
offering “haircuts/ hairstyling/ custom haircolor/ makeup application . . .
waxing” (www.honeycombsalonsuite.wixsite.com).14

14 Id. at 115.
Serial No. 87830306
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3. “HONEYCOMB SALON” in Louisville, Kentucky. Offering hair services
“from color to cut” (www.honeycombsalonlou.com).15

4. Honeycomb offering “salon services . . . hair, makeup + waxing” in Billings,
Montana (www.honeycombmt.com).16

5. HONEYCOMB HAIR ARTISTRY offering hair “styling and creating
coloring” in Catonsville, Maryland (www.honeycombhairartistry).17

15 Id. at 117.
16 Id. at 121.
17 Id. at 132.
Serial No. 87830306
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6. “HONEYCOMB Hair Design” offering “health/beauty … hair salon …
barber shop” services in Milton, Florida
(www.facebook.com/honeycombhairdesign).18

18 Id. at 135.
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7. HONEYCOMB Organic Hair Studio in Phoenix, Arizona
(www.honeycombhair.com).19

8. “Honeycomb Salon” offering hair salon and waxing services in Cleveland,
Ohio (www.honeycombcle.com).20

19 Id. at 142.
20 Id. at 149.
Serial No. 87830306
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9. “Honey Comb Salon & Spa” featuring “Hair-Nails-Waxing …” in Eugene,
Oregon (www.honeycombsalonandspa.com).21

21 Id. at 152.
Serial No. 87830306
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10. “THE HONEYCOMB SALON” in San Diego, California
(www.lovemyhoneycomb.com).22

While we cannot discount the possibility that some of these third-party uses of
HONEYCOMB in connection with hair salons may be related, there is no evidence to

22 Id. at 190.
Serial No. 87830306
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suggest this is the case for any of them. To the contrary, the printouts derive from
different website addresses and the term HONEYCOMB appears in different
stylizations and frequently alongside various logos. Thus, we conclude that it is the
more likely scenario that each third-party use of HONEYCOMB is being used to
identify a separate and unrelated source for services.
There is no “magic number” of third-party uses or type of evidence required to
prove weakness. Weakness of term or mark is not a binary question; rather the degree
of weakness can vary across a spectrum. We hasten to add, however, that the number
of third-party uses in this case is in line with what has been relied upon by our
primary reviewing court in previously finding weakness based on extensive third-
party use of the same or similar term. Indeed, the Federal Circuit has twice
characterized evidence of third-party use as “powerful on its face,” for purposes of
demonstrating weakness, based on fewer third-party uses than what we have before
us in this case. See Jack Wolfskin, 116 USPQ2d at 1136 (paw print found weak in
connection with clothing based on a record comprising 14 third-party registrations
and uses of paw print marks); and Juice Generation, 115 USPQ2d at 1674 (26 third-
party registrations and uses of marks containing the words “Peace” and “Love”).
Thus, on this record, we find that the term HONEYCOMB is weak for salon
services, including hair salons. The significant number of unrelated hair salons,
including those that provide other salon-type services, like waxing, using the term
HONEYCOMB to identify their services persuades us this term is prevalent and
consumers are likely to distinguish marks with this term based on other elements
Serial No. 87830306
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that would otherwise have less source-identifying significance. In other words, and
put into context here, consumers viewing the two marks can rely upon subtle
differences between the marks, such as Registrant’s scissors design element that
separates the words HONEY and COMB, as well as the term SALON, and Applicant’s
addition of the wording WAXING STUDIO for purposes of distinguishing the marks
and perceiving that the two marks are identifying two unrelated businesses.
We further take note that several of the above commercial entities advertise
additional services other than hair styling, including “waxing” and skin care from the
same location. This brings into relevance the statement made by the Examining
Attorney that the “analysis may have been different” if Applicant had argued that
HONEYCOMB was weak in the marketplace for both body waxing and hair salon
services. Although Applicant may not specifically have argued that HONEYCOMB
was not necessarily commercially weak for body waxing services, in addition to hair
salon services, the evidence indicates that this is the case and this is relevant in our
analysis.
Finally, in addition to this commercial weakness of HONEYCOMB, we keep in
mind, as discussed above, the different suggestive meanings that can be attributed to
Applicant’s use of the term versus Registrant’s use of the term. Specifically,
Registrant’s use of the scissors design in its mark
emphasizes the two separate words, HONEY and COMB, and is suggestive of honey
Serial No. 87830306
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and combing for hair styling. Applicant’s mark, on the other hand, HONEYCOMB
WAXING STUDIO, evokes beeswax used in honeycombs.
In view of the commercial weakness of the term HONEYCOMB in connection with
salon services, including hair styling, and the overall slightly different suggestive
meanings of this term in one mark versus the other, we find that the sixth DuPont
factor weighs in favor of not finding confusion likely.
C. Relatedness of the Services, Their Trade Channels and Classes of
Purchasers

We now consider the relatedness of the services, their trade channels and the
classes of purchasers. In doing so, we make our determination based on the services
as they are identified in the application and cited registration. See In re Dixie Rests.,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The evidence adduced by the Examining Attorney and Applicant demonstrates a
close relationship between body waxing and hair salon services. Particularly, the
Examining Attorney attached Internet printouts showing 7 different third parties
advertising hair styling and waxing services from the same location.23 As illustrated
above, Applicant’s own Internet evidence reveals at least 4 additional businesses

23 Attached to Office Actions issued on June 30, 2018 and February 27, 2019.
Serial No. 87830306
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offering the same services from the same location. The evidence also shows that these
services can be advertised in the same trade channels and will target the same class
of consumers, mainly female.
Accordingly, the DuPont factors involving relatedness of the services, their trade
channels, and classes of purchasers, all favor finding confusion likely.
II. Conclusion
Notwithstanding the close relationship between Applicant’s body waxing services
and Registrant’s hair salon services, and our finding that they may be offered in the
same trade channels to the same classes of consumers, we ultimately do not find a
likelihood of confusion between Applicant’s mark, HONEYCOMB WAXING STUDIO
and the registered mark, . We make this decision
despite finding the marks are slightly more similar than not because the evidence
also demonstrates that many other businesses use that same term for the same
services. Consumers are thus able to distinguish the two marks based on their
differences and confusion is not likely to result when both marks are used in
connection with the involved services.
Decision: The refusal to register Applicant’s HONEYCOMB WAXING STUDIO
mark under Section 2(d) of the Trademark Act is reversed.