Bare Escentuals, Inc.

Trademark Trial and Appeal Board

Aug 28, 2006

No. 76569932 (T.T.A.B. Aug. 28, 2006)

Mailed:
August 28, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bare Escentuals, Inc.
________

Serial No. 76569932
_______

Kimberly G. Russell for Bare Escentuals, Inc.

Carolyn V.C. Gray, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Bare Escentuals, Inc. seeks registration on the
Principal Register of the mark WIDE AWAKE for goods
identified in the application as follows:
“cosmetics, namely, eye shadow and mascara;
cosmetics for the skin and eyes; skin creams,
lotions and gels, essential oils used as
cosmetics” in International Class 3.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register applicant’s mark based upon Section 2(d) of the

1 Application Serial No. 76569932 was filed on January 14, 2004
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76569932
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Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the
following previously registered marks, all five
registrations owned by the same entity:
AWAKE for “cosmetics and cosmetic
soaps, namely, lipsticks and
lip colors, eye shadows, eye
pencils, mascara, cleansing
creams, and gels, lotions,
liquid exfoliant/moisturizer,
eye cream, facial masks,
foundation makeups with and
without sunscreen, and face
powder” in International Class
3;2
AWAKE for a “full line of cosmetic
brushes and sponges” in
International Class 21;3

2 Registration No. 2129738 issued to KOSE Corporation, a
Japanese corporation, on January 20, 1998 claiming use anywhere
and use in commerce at least as early as October 18, 1996; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
3 Registration No. 2175649 issued to KOSE Corporation, a
Japanese corporation, on July 21, 1998 claiming use anywhere and
use in commerce at least as early as June 17, 1997; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
Serial No. 76569932
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for a “house mark for a line of
cosmetics” in International
Class 3;4

for a “house mark for a line of
cosmetics” in International
Class 3; and
for a “house mark for a line of
cosmetic brushes and sponges”
in International Class 21;5

4 Registration No. 2353917 issued to KOSE Corporation, a
Japanese corporation, on May 30, 2000 claiming use anywhere and
use in commerce at least as early as October 18, 1996. The mark
is described as follows: “The mark consists of the term ‘AWAKE’
and a fanciful design comprised of a swirl design inside a solid
rectangle. There are eight tear-drop shapes which run along the
inside of the swirl.” Section 8 affidavit (six-year) accepted and
Section 15 affidavit acknowledged.
5 Registration No. 2387449 issued to KOSE Corporation, a
Japanese corporation, on September 19, 2000 claiming use anywhere
and use in commerce at least as early as October 18, 1996 as to
the goods in International Class 3 and claiming use anywhere and
use in commerce at least as early as June 17, 1997 as to the goods
in International Class 21; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
Serial No. 76569932
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for “cosmetic utensils, namely,
cosmetic brushes and cosmetic
sponges” in International Class
21.6
as to be likely to cause confusion, to cause mistake or to
deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal, but applicant did not request an
oral hearing. We affirm the refusal to register.
Preliminary matter:
In its request for reconsideration, applicant argued
that there were sufficient differences in the marks and in
the marketing of the involved goods to make confusion
unlikely, but offered, in the alternative, to amend its
application to reflect the trade channels through which its
goods are offered, i.e., “ … for distribution only directly
from Applicant, in Applicant’s retail stores, by certain

6 Registration No. 2591800 issued to KOSE Corporation, a
Japanese corporation, on July 9, 2002 claiming use anywhere and
use in commerce at least as early as June 17, 1997. The mark is
described as follows: “The mark consists in [sic] the term
‘AWAKE’ and a fanciful design comprised of a swirl design inside a
solid rectangle. There are eight tear-drop shapes which run along
the inside of the swirl.”
Serial No. 76569932
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vendors that provide interactive retail services via
computer, cable and satellite television and the Internet,
by certain vendors that provide computerized on-line retail
stores, and through selected beauty and skin care salons.”
In denying the request for reconsideration, the Trademark
Examining Attorney stated that such a restriction would not
obviate the likelihood of confusion, and therefore did not
enter it into the record. In the last section of its appeal
brief, applicant re-stated that “Applicant remains willing
to amend the goods description in its Application to state
that the covered items are sold only via direct purchases
from Applicant, in Applicant's retail stores, via QVC and
Sephora, and though selected spas and salons.” The
proposed, alternative identification of goods in this
section of the appeal brief was exactly the same as that
offered earlier in the request for reconsideration.
However, applicant is advised that once the Board
renders a decision on appeal, the application may not be
reopened (except on order by the Director, or to enter a
disclaimer). See Trademark Rule 2.142(g). Therefore,
applicant may not, in a single application, obtain a
decision from the Board on the issue of likelihood of
confusion based upon its current identification and then, if
that decision is unfavorable, have the Trademark Examining
Serial No. 76569932
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Attorney, and then ultimately the Board, decide the same
issue of likelihood of confusion with respect to a more
limited identification of goods. If applicant had wished
the Board to consider the registrability of its mark with
its identification limited as to trade channels, it should
have amended its application accordingly during the course
of the prosecution of the application.7 Accordingly, the
issue of likelihood of confusion will be decided on the
basis of the original (and operative) identification of
goods: “cosmetics, namely, eye shadow and mascara;
cosmetics for the skin and eyes; skin creams, lotions and
gels, essential oils used as cosmetics.”
Analysis: Likelihood of Confusion
This brings us to the substantive issue before us in
this appeal: likelihood of confusion.
Applicant argues: that the cited marks differ from
applicant’s mark in appearance, sound and meaning; that the
cited marks should be afforded a narrow scope of protection;
that the cited marks coexist with third-party marks having

7 For example, after receiving the Examining Attorney’s denial
of its request for reconsideration, applicant could have requested
that its identification be amended, and submitted such request
with a request for remand. In that situation, if the Examining
Attorney had found the proposed identification acceptable, but
still maintained the refusal of registration, the issue of
likelihood of confusion would have been briefed based on the new
identification of goods, and the Board would have made its
determination based on that more restrictive identification.
Serial No. 76569932
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similar terms for cosmetics and related goods; that the
circumstances surrounding the marketing of registrant’s
goods and applicant’s goods differ; and that a high degree
of consumer care is afforded registrant’s and applicant’s
respective goods – such that a likelihood of confusion
between the cited marks and applicant’s mark is unlikely.
By contrast, the Trademark Examining Attorney argues
that the respective marks are similar as to appearance,
sound and commercial impression, and that the goods of
applicant and registrant are identical, complementary and/or
closely related.
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The goods
We turn first to the du Pont factor focusing on the
relationship of the goods. We agree with the Trademark
Serial No. 76569932
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Examining Attorney that these goods are identical (e.g., eye
shadow, mascara, skin creams, lotions and gels),
complementary (e.g., cosmetics for the skin and eyes with
cosmetic brushes and sponges) and/or otherwise closely
related (the remaining cosmetic items). This factor
strongly favors the position of the Trademark Examining
Attorney.
Channels of trade and types of consumers
It follows that given the fact we are faced with
identical, complementary and/or otherwise closely-related
goods, where neither registrant nor applicant has stated any
express limitations, applicant’s goods and registrant’s
goods will move in the same channels of trade.8 Neither
identification is limited as to price, and so we must
presume that the goods could include relatively inexpensive
items that may well be purchased on impulse by the same
classes of ordinary consumers. The record herein does not
support applicant’s contentions that a high degree of

8 We note that even if applicant’s alternative amendment were
an unequivocal part of the identification of goods herein, and we
were to conclude that applicant’s and registrant’s respective
goods would never be sold in the very same store, we find that
they would still both be sold in the same types of retail stores,
over the Internet, etc. Consumers already acquainted with
registrant’s cosmetics and utensils are likely to also encounter
applicant’s cosmetics, and would be likely to be confused in the
event that the goods were being sold under confusingly similar
marks.
Serial No. 76569932
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consumer care will be afforded applicant’s and registrant’s
goods. Accordingly, these related du Pont factors also
favor the position taken by the Trademark Examining
Attorney.
The marks
We turn next to the du Pont factor focusing on the
similarity of the marks in their entireties. We must
consider whether the marks are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Applicant argues
that when viewed in their entireties, its mark and
registrant’s cited marks differ as to appearance, sound and
meaning, resulting in significantly different commercial
impressions.
As to the literal elements of registrant’s cited marks,
applicant is correct in noting that each of the five cited
marks contains only two syllables while its mark contains
three syllables. Hence, when considered as a whole, the
pronunciation of these marks is different.
All five of the marks in the cited registrations
contain the word “Awake” as their dominant element.
Moreover, we find that the marks in Reg. Nos. 2129738 and
Serial No. 76569932
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2175649 are the most similar to applicant’s mark, consisting
of just the word AWAKE in a standard character format.9
Because they are the most similar, we have chosen to focus
primarily on these two marks in assessing the likelihood of
confusion herein.
As to appearance, applicant argues as follows:
Applicant’s mark is a composite word mark
that consists of the two words “WIDE” and
“AWAKE.” In contrast, the Cited Marks each
consist of the single term “AWAKE.”
Applicant’s mark simply contains a term not
present in the Cited Marks. …

Because “Wide” is the first word of applicant’s mark,
it does create a somewhat different appearance for
applicant’s mark.
However, it is the matter of connotation where
applicant and the Trademark Examining Attorney disagree most
strongly. As to meaning, applicant argues that its mark is
quite different from the cited marks:
The word “awake” is an adjective that means
conscious rather than in a state of sleep.
True and correct copies of pertinent pages of
the Internet websites www.m-w.com and

9 As a consequence of these two of registrant’s marks having
been depicted as a standard character drawing, registrant’s AWAKE
marks may be displayed in any reasonable format. See INB National
Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992), citing
Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ
35, 36 (CCPA 1971).
“[T]he argument concerning a difference in type style is not
viable where one party asserts rights in no particular
display …. Thus, … the displays must be considered the same.”
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983).
Serial No. 76569932
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www.dictionary.reference.com, containing
definitions of the word "awake," are attached
as Composite Exhibit C hereto. As used by
the Registrant, the term “AWAKE” connotes the
awakening of the user of Registrant’s goods
to her own unseen beauty and hidden grace.
The Cited Marks suggest a slow “unfurling”
and blooming of the user. See Exhibit B
hereto. The Cited Marks connote a gradual
and gentle awakening of the user to her own
beauty. This connotation is evidenced by and
reinforced by the unfurling frond design
element and the elemental nature of the
stylization of the marks.

In contrast, the term “wide awake” is an
idiom that means fully awake or very alert.
The term “wide” as used in the idiomatic
phrase alludes to the eyes being wide open.
True and correct copies of pertinent pages of
the Internet website www.m-w.com and
www.dictionary.reference.com, containing
definitions of the term “wide awake,” are
attached …. “WIDE AWAKE” connotes an
alertness and awareness, suggesting that
Applicant’s goods will energize the user and
enable the user to face anything that may
come her way. Further, the term secondarily
suggests that the use of Applicant’s goods
will give the user an enhanced, alert or
“wide-eyed” appearance. The impression of
being alert and ready to take on the world is
entirely different from that of slowly and
gently opening to one’s beauty. The
commercial impressions of the respective
marks are distinctive and confusion as to
source is unlikely.

Applicant’s brief, p. 6. By contrast, the Examining
Attorney argues, “the impression presented by applicant’s
proposed mark WIDE AWAKE is one of gradation from AWAKE.”
We agree with applicant that “wide awake” alludes to
one’s eyes being wide open, and the term has a strong
Serial No. 76569932
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connotation of being “fully awake” or “very alert.”
However, applicant’s own dictionary definitions for the word
“awake” alone also contain an entry for “to become alert,”
and show that “alert” is actually a synonym for “awake.”
Hence, we agree with the Trademark Examining Attorney that
both could well create the same connotation of alertness –
at most, applicant’s mark suggesting comparatively more
alertness. Contrary to applicant’s position, we find that
this very similar connotation outweighs whatever
dissimilarities may exist between the sound and appearance
of the marks. When compared in their entireties, we find
that applicant’s mark creates a similar commercial
impression to the marks in the cited registrations.10
The number and nature of similar marks
As to the du Pont factor focusing on the number and
nature of similar marks in use on similar goods, applicant
argues that “the term ‘AWAKE’ and its alternative forms
‘AWAKEN’ and ‘AWAKENING’ are used to imply that cosmetics
make the user aware of her inner beauty, bring that beauty
to the forefront and make it visible to the external world.”
Applicant contends that “many companies in the cosmetics

10 In limiting our discussion to Registration Nos. 2129738 and
2175649, we do not mean to imply that there is no likelihood of
confusion between applicant’s mark and the remaining cited
registrations. On the contrary, we find that these marks are also
confusingly similar.
Serial No. 76569932
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industry wish to cloak their goods in such positive
connotations.” As a result, applicant argues that the term
“Awake” is diluted in the cosmetics field, and the cited
marks should be afforded only a narrow scope of protection.
AWAKEN SKIN
THERAPY
for “skin care products, namely skin cleansers,
skin cleansing cream, skin cleansing lotion,
skin conditioners, skin cream, skin emollients,
skin gels, skin lighteners, skin masks, skin
moisturizers, skin soap, skin texturizers, skin
toners, and skin exfoliants” in Int. Cl. 3;11
THE GREAT AWAKENING for “skin care and face cleansing
preparations, namely, exfoliater” in
International Class 3;12
AWAKEN YOUR SIXTH
SENSE!
for “eau du [sic] parfum, eau du
[sic] toilette, cologne, bath oil,
bath lotion, bath gel, men’s shaving
balm” in International Class 3;13
AWAKENING for “skin care and hair care
products, namely, shampoo, lotion,
creams, soap, masks, non-medicated
bath salts, and sun block” in
International Class 3;14

11 Reg. No. 2894382 issued to John Decorato, a USA citizen, on
October 19, 2004 claiming use anywhere and use in commerce since
at least as early as December 2002; no claim is made as to the
word “Skin” apart from the mark as shown.
12 Registration No. 2285856 issued to philosophy, inc., an
Arizona corporation, on October 12, 1999 claiming use anywhere and
use in commerce since at least as early as January 15, 1998;
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
13 Registration No. 2056375 issued to Erox Corporation on April
22, 1997 claiming use anywhere and use in commerce since at least
as early as October 14, 1994; registration was later assigned to
Human Pheromone Sciences, Inc., recorded with the assignment
branch of the United States Patent and Trademark Office at Reel
No. 2030, Frame No. 0387; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
14 Registration No. 2273945 issued to Olim Industries of Israel,
N.A. Ltd., a California corporation, on August 31, 1999 claiming
use anywhere and use in commerce since at least as early as July
Serial No. 76569932
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HAIKU AWAKENINGS for “fragrance and toiletry products,
namely, eau de parfum, shower gel,
body lotion and body powder” in
International Class 3;15
FRESH AWAKENINGS for “bath gels; shower gels; hand
lotions; and body lotions” in
International Class 3;16
for “perfume oils,
essential oils for
personal use, natural
perfume” in International
Class 3;17

26, 1994; Section 8 affidavit (six-year) accepted and Section 15
affidavit acknowledged.
15 Registration No. 2837264 issued to Avon Products, Inc. on
April 27, 2004 claiming use anywhere and use in commerce since at
least as early as July 17, 2003.
16 Registration No. 2302368 issued to Jafra Cosmetics
International, Inc., a Delaware corporation, on December 21, 1999
claiming use anywhere and use in commerce since at least as early
as September 1, 1996; [no record of Section 8 having been filed].
17 Registration No. 2819687 issued to Michael Scott O’Malley, a
Canadian citizen on March 2, 2004 claiming use anywhere at least
as early as July 15, 1999 and use in commerce since at least as
early as October 1, 2000; no claim is made as to the word
“perfume” apart from the mark as shown.
Serial No. 76569932
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In order to deal with any allegations on the part of
the Office that registrations alone are not indication of
whether the marks are actually used in commerce on the
identified goods, applicant submitted copies of Internet
websites showing that manufacturers and merchants are
actually using these third-party marks in the marketplace
for cosmetics:

AWAKEN SKIN THERAPY THE GREAT AWAKENING
18

19
THE GREAT AWAKENING AWAKENING

18 http://www.drdecorato.com/skinhealth03.htm
19 http://www.qvc.com
20 http://www.nordstrom.com
Serial No. 76569932
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philosophy Peel Kit
A peel, or rapid exfoliation of the skin, is indicated
for fine lines, uneven skin tone, congested pores,
acne and general environmental damage. Regular in-
home peels can help to buffer fine lines, minimize
enlarged pores, improve skin texture and help keep
your skin radiantly clear. Our peel kit includes The
Great Awakening (10 enzyme capsules) and jar of
Oxygen Cream (2 oz.) for a total of 10 treatments.
- By philosophy; made in the USA. 20
21
HAIKU AWAKENINGS AWAKEN YOUR SIXTH SENSE!

22

23

However, we do not find these third-party uses to be
all that persuasive. Although applicant has clearly
buttressed the registrations with Internet evidence of
extant use, there is no corroborating evidence to show the
extent of that use. In addition, in the vast industry of
cosmetics, this handful of third-party uses cannot serve to

21 http://www.e-awakening.com/products/products.html
22 http://shop.avon.com/avonshop/
23 http://www.naturalattraction.com/
Serial No. 76569932
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significantly diminish the scope of protection of
registrant’s marks for identical goods.
Furthermore, we find that none of these third-party
uses is as close to the registered marks as is applicant’s
mark. These registrations and matching Internet uses are
all for other forms of the word “awake,” namely, “awaken,”
“awakening” and “awakenings.” Accordingly, we find that the
record is devoid of any AWAKE marks other than registrant’s
marks. Accordingly, these third-party uses cannot support a
limited zone of protection for registrant’s marks.
Conclusion
While there are some differences as to sound and
appearance when comparing applicant’s mark to registrant’s
marks, we find that the connotation and commercial
impression of applicant’s WIDE AWAKE mark are similar
enough to the connotation and commercial impression of
registrant’s cited AWAKE marks to support a finding of
likelihood of confusion herein. The involved goods are
identical, complementary and closely related, and all
presumably move through similar channels of trade. These
relatively inexpensive products are purchased by ordinary
consumers without extraordinary levels of care. We disagree
with applicant’s contention that it has demonstrated that
Serial No. 76569932
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the word “Awake” is not particularly strong as applied to
cosmetic products. Accordingly, we find that there will be
a likelihood of confusion in this case. Finally, to the
extent that any of applicant’s points raise a doubt about
our conclusion, we must resolve any such doubt in favor of
registrant.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.