Bespoke Europe Limited

Trademark Trial and Appeal Board

Mar 28, 2016

No. 79133036 (T.T.A.B. Mar. 28, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bespoke Europe Limited
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Serial No. 79133036
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Jon K. Perala, Esq., of Perala Law Office
for Bespoke Europe Limited.

Paul Moreno, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Wellington, Kuczma, and Goodman,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Bespoke Europe Limited (“Applicant”) seeks registration on the Principal Register
of the mark NAIL HQ, in standard character format, for the following goods and
services:
Cosmetics preparations and personal care preparations, namely, non-
medicated skin lotions and creams; non-medicated skincare preparations;
false eyelashes; body glue for hair piece bonding; non-medicated toiletries;
essential oils; soaps; skin care products, namely, non-medicated skin serum;
perfumery; nail varnish removers; hand and nail cream; substances for
treating nails, namely, nail creams; cosmetic cotton wool; make-up; lotions
for skin; beauty creams; beauty masks; facial masks; aloe vera gel for cosmetic
purposes; exfoliant creams and body scrubs; artificial nails; artificial nails for
cosmetic purposes; false nails; glue for strengthening nails; lotions for
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strengthening nails; nail art stickers; nail polish base coat; nail buffing
preparations; nail care preparations; nail cream; nail enamel; nail enamel
removers; nail enamels; nail gel; nail glitter; nail hardeners; nail hardeners
cosmetics; nail polish; nail polish base coat; nail polish remover; cosmetic nail
tips; preparations for reinforcing the nails; abrasive boards for use on
fingernails, namely, emery boards; fingernail decals in International Class 3;

Manicure and pedicure instruments, namely, nail files, tweezers, scissors,
clippers, razors, knives, rasps, files, pincers, tweezers, nippers, scrapers,
cuticle pushers, polishing, abrading, cutting and buffing apparatus and
instruments; nail buffers; nail files; fingernail polishers in International
Class 8; and

Provision of beauty, perfumery, make-up and skin treatment services,
namely, make-up application and cosmetic body care; beauticians' services;
beauty consultation services regarding the selection and use of personal care
products, cosmetics, make-up, toiletries, manicure and pedicure products;
manicure services; pedicure services; nail treatment services; hygienic and
beauty services for human beings in International Class 44.1

The application contains a disclaimer of the exclusive right to use of the word
NAIL.
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), in view of the registered mark NAIL HQ, in standard character
format, for “retail store services, namely, pharmacy, retail drug store and general
merchandise store services.”2 The registration contains a disclaimer of the exclusive
right to use of the word NAIL.

1 Application Serial No. 79133036 was filed on April 30, 2013, under Trademark Act Section
66(a), 15 U.S.C. § 1141f(a), based on International Registration No. 1167742 dated April 18,
2013.
2 Registration No. 4431047 issued November 12, 2013.
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed and briefs have been filed.
For the following reasons, we affirm the likelihood of confusion refusal.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Similarity of the Marks
We begin by comparing the two marks in their entireties and, in doing so, look to
their appearance, sound, connotation and commercial impression. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). In this case, there is little to analyze because the applied-
for mark, NAIL HQ, is identical to the cited registered mark. Thus, they are the same
in sight and sound. Applicant expressly concedes this much in its brief.3

3 13 TTABVUE 3 (“Applicant concedes that the marks are indeed identical.”).
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The only possible distinguishing point between the marks is that the term NAIL,
which has been disclaimed in both marks, takes on a more highly descriptive meaning
in the context of Applicant’s goods and services. In the context of Applicant’s recited
goods and services that specifically involve fingernails or toenails, e.g., nail
treatments, manicure and pedicure instruments, and nail treatment services, the
term NAIL takes on an obvious, highly descriptive meaning. Registrant’s services, on
the other hand, involve retail store or drugstore services and do not specifically
include nail services or products. Thus, in the context of these services, the term “nail”
may likely be understood as a reference to the sale of metal fasteners as well products
for fingernails or toenails.
Nevertheless, as we have often held, the identity of marks is a du Pont factor that
“weighs heavily in favor of a finding of likelihood of confusion.” In re i.am.symbolic,
LLC, 116 USPQ2d 1406, 1411 (TTAB 2015). Accord In re Midwest Gaming & Entm’t
LLC, 106 USPQ2d 1163, 1165 (TTAB 2013). (“In short, we find that the marks are
identical. This finding under the first du Pont factor strongly supports a conclusion
that a likelihood of confusion exists.”).
Accordingly, this du Pont factor weighs in favor of finding a likelihood of confusion.
Similarity Between the Goods and Services
We turn now to the du Pont factor involving the relatedness of goods and services.
It is settled that in making our determination, we must look to the goods as identified
in the application vis-à-vis those recited in the cited registration. See Octocom Sys.,
Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
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Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). We further
note that when the involved marks are identical, as is the case here, “the degree of
similarity between the goods [or services] that is required to support a finding of
likelihood of confusion declines.” i.am.symbolic, 116 USPQ2d at 1402; see also, In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993) (“even when
the goods or services are not competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common source”); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc.,
60 USPQ2d 1812 (TTAB 2001). It is only necessary that there be a “viable
relationship between the goods” to support a finding of likelihood of confusion. In re
Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
1. Applicant’s Class 44 services and Registrant’s Services
In its appeal brief, Applicant “concedes that Applicant’s services in Class 44 are
highly related to Registrant’s retail services in Class 35, and that consumers would
likely be confused as to the origin of Applicant’s services if Applicant’s mark is allowed
to register in Class 44.”4 Because Applicant concedes this factor, as well admitting
the marks are identical, and ultimately admits that there is a likelihood of confusion
with the registered mark, we need not give further attention in this appeal with
respect to Applicant’s Class 44 services.

4 13 TTABVUE 3.
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2. Applicant’s Goods in Classes 3 and 8 vis-a-vis Registrant’s Services
Applicant’s Class 3 goods are described in general as “cosmetics preparations and
personal care preparations,” and specifically include “non-medicated skin lotions and
creams . . . non-medicated toiletries . . . soaps . . . cosmetic cotton wool . . . make-up .
. . lotions for skin . . . artificial nails . . . nail polish . . . abrasive boards for use on
fingernails, namely, emery boards.” Applicant’s Class 8 goods are prefaced as
“manicure and pedicure instruments,” but specifically include certain household
basics such as nail files, tweezers, scissors, clippers, and razors.
In support of the argument that Applicant’s Class 3 and 8 goods are related to
Registrant’s “retail store services, namely, pharmacy, retail drug store and general
merchandise store services,” the Examining Attorney submitted Internet printouts
from the retail stores Target, Macy’s, Walmart, and Walgreens.5 These printouts
show that retail establishments that offer pharmacy services or sell general
merchandise may specifically feature the same types or categories of goods listed in
Classes 3 and 8 of the application. For example, Walmart’s website allows the
consumer to shop its “Beauty” and “Makeup” category that includes subcategories

5 We note that the Examining Attorney also submitted numerous third-party registrations
in support of his argument that Applicant’s goods and services are related to Registrant’s
services. However, we find the registrations submitted have little probative value here and
have not been relied upon in making our ultimate conclusion regarding a likelihood of
confusion. Specifically, in order for third-party registrations to have some probative value
they should be use-based and cover the listed goods and services involved in the proceeding
in order to show that these types of goods and services may emanate from the same source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Here, nearly all of the
third-party registrations do not cover pharmacy, retail drug store or general merchandise
store services; rather, they involved retail store services featuring specific goods or specific
types of goods.
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such as “nails . . . face … body makeup.”6 The Walgreens website mentions its
“Pharmacy” category of products and, on the same page, identifies many of the same
products listed in Classes 3 and 8 of the application under the product category of
“facial skin care” and “cleansers” as well as various nail-care instruments and
products.7 The retailer Target also sells not only a variety of cosmetics and skincare
preparations but also some of the same specific instruments listed in Class 8 of the
application, including “manicure kits” and “pedicure kits.”8 Based on the sheer
number and variety of cosmetics, personal care preparations and nail care
instruments being offered by these general merchandise retailers, it is evident that
general merchandise or pharmacy retailers dedicate significant attention to these
categories of goods. Indeed, general merchandise retailers and pharmacies constitute
a viable and likely trade channel for the very same type of goods listed in the
application.
Accordingly, we find that there is a sufficient relationship between Applicant’s
goods, as listed in Classes 3 and 8, with Registrant’s retail pharmacy, drugstore, and
store services featuring general merchandise, and this factor weighs in favor of
finding a likelihood of confusion.

6 Office Action issued on July 6, 2015 at pp. 6-17.
7 Id. at pp. 25-60.
8 Id. at pp. 62-83.
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Conclusion
Upon review of the entire record, we find that Applicant’s applied-for mark NAIL
HQ, in all three classes of goods and services, is likely to cause confusion with the
mark in the cited registration under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d). In particular, with respect to Applicant’s Class 44 services, Applicant
admitted that there is a likelihood of confusion. We further find that consumers
already familiar with Registrant’s NAIL HQ mark for general merchandise store,
drugstore and pharmacy services are likely to be confused as to source upon
encountering Applicant’s Class 3 and 8 goods being sold under the identical mark,
NAIL HQ which may be featured in the same type of retail stores.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.