Christian Des Garets

Trademark Trial and Appeal Board

May 19, 2004

No. 76281704 (T.T.A.B. May. 19, 2004)

Mailed: May 19, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Christian Des Garets
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Serial No. 76281704
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Lawrence E. Abelman and Julie B. Seyler of Abelman Frayne &
Schwab for Christian Des Garets.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Christian Des Garets (an individual, citizen of
France) filed an application on July 5, 2001, to register
on the Principal Register the mark ESCENTIAL DE PERRON
RIGOT for goods amended to read “essential oils for
personal use, depilatory waxes and preparations, lotions or
substances for use in the depilatory process” in
International Class 3. The application is based on
applicant’s assertion of a bona fide intention to use the
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76281704
2
mark in commerce. The application includes the following
statements, all accepted by the Examining Attorney and
entered into the record : (1) “Applicant is the owner of
1,490,735 for PERRON RIGOT”;1 (2) “The English translation
of ESCENTIAL DE PERRON RIGOT is Essentials of Perron
Rigot”; and (3) “PERRON RIGOT does not identify the name of
a living individual.”
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark ESCENTIALS for the following
goods:
“cosmetics, namely mascara, eyeshadow,
eyeliner, eyebrow pencil, foundation,
concealer, lipstick, blush, face
powder, and lip liner; fragrances,
namely, men’s and women’s cologne and
perfume; beauty preparations, namely,
skin moisturizing cream, skin toner,
skin cleansing cream, and makeup
remover; nail care preparations,
namely, nail polish, top coat, polish
remover, base coat and hardener; men’s
and women’s shampoo; and hair care
preparations, namely, conditioner, hair
spray, styling mousse, and styling gel”
in International Class 3,2
1 Registration No. 1,490,735 issued June 7, 1988, for the mark
PERRON RIGOT (in stylized lettering) for “perfumed water,
perfumed oil, milk lotion, skin lotion, toilet cream, hair dye,
manicure enamel, depilatory, toilet soap, hair shampoo,
dentifrices” in International Class 3; Section 8 accepted.
2 Registration No. 1,687,493, issued May 19, 1992; Section 8
affidavit accepted, Section 15 affidavit acknowledged; renewed.
Ser. No. 76281704
3
as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing.
We reverse the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/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).
The Examining Attorney contends that applicant has
adopted the singular form of the registered mark and added
applicant’s own previously registered mark thereto; that
the addition of applicant’s house mark does not obviate a
likelihood of confusion; that the term “ESCENTIAL[S]”
suggests for both applicant’s and registrant’s goods that
the goods are “necessary” or “essential” items, and that
they are scented, making the commercial impression of both
Ser. No. 76281704
4
applicant’s and registrant’s marks similar; that the
dominant portion of applicant’s mark is the term
“ESCENTIAL,” which is nearly identical to the cited
registered mark ESCENTIALS; that the respective goods are
closely related and are offered through the same channels
of trade; and that doubt is resolved in the cited
registrant’s favor.
The Examining Attorney submitted (i) printouts of
several third-party registrations to show that the goods of
both applicant and the cited registrant frequently emanate
from a common source under a single mark; and (ii) a copy
of the search report from his search of the USPTO records
showing that there are only four “hits” for the word
“ESCENTIAL[S],” to show that the term is not weak in the
relevant fields.
Applicant argues that the registered word ESCENTIALS
“is the phonetic, verbal and connotative equivalent of the
word ESSENTIALS” (brief, p. 2); that “essentials” is a term
of art in the beauty and personal care fields; that
“escentials” is merely a misspelling of the highly
suggestive or descriptive word “essentials” in the personal
care industry, and the numerous third-party registrations
which include the term “ESSENTIALS” in the cosmetic, skin
care and hair care fields, establish that the registered
Ser. No. 76281704
5
mark is entitled to only a limited scope of protection
because consumers are confronted with numerous such marks
and will distinguish between them; that the misspelling of
a highly suggestive or descriptive word does not change the
significance of the word; that, in addition, applicant’s
mark contains the arbitrary, distinct and dominant element
“PERRON RIGOT” (a registered mark owned by applicant);
that, when considered in their entities and not dissected
into separate parts, applicant’s mark and the registered
mark are appreciably different in sound, appearance,
connotation and create substantially different commercial
impressions; and that applicant’s goods are inherently
different from and are commercially unrelated to the goods
described in the cited registration.
Turning first to the involved goods, it is well
settled that goods (or services) need not be identical or
even competitive to support a finding of likelihood of
confusion; it being sufficient that the goods (or services)
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See In re
Peebles Inc., 23 USPQ2d 1795 (TTAB 1992); and In re
Ser. No. 76281704
6
International Telephone and Telegraph Corporation, 197 USPQ
910 (TTAB 1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
constrained to compare the goods (or services) as
identified in the application with the goods (or services)
as identified in the registration. See Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987).
In this case, the cited mark is registered for a wide
variety of cosmetics, fragrances, beauty preparations, nail
care preparations and hair care preparations, while
applicant intends to offer “essential oils for personal
use, depilatory waxes and preparations, lotions or
substances for use in the depilatory process.” The
Examining Attorney submitted printouts of numerous third-
party registrations, based on use in commerce, listing
these types of goods in connection with the same marks.
See e.g., Registration No. 2,569,522 for, inter alia,
“essential oils for personal use” and “soaps, perfumes,…
moisturizing lipsticks and hair lotion”; and Registration
Ser. No. 76281704
7
No. 2,529,699 for, inter alia, “essential oils for personal
use” and “nail polish, eyebrow pencil,… blush, lipstick,…
mascara, eyeliner,… perfume, cologne,….”
When considering the third-party registrations
submitted by the Examining Attorney, we are aware that such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them. Such
third-party registrations nevertheless have some probative
value to the extent they may serve to suggest that such
goods (or services) are of a type which emanate from the
same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
In view of the foregoing evidence, we find that
applicant’s essential oils and depilatory products and
registrant’s various personal care and beauty products are
related within the meaning of the Trademark Act.
With regard to the channels of trade, in the absence
of any specific limitations thereon in the respective
identifications of goods, the Board must assume that the
goods travel in all the normal channels of trade to all the
usual classes of customers for such goods. See Octocom
Systems Inc. v. Houston Computers Services Inc., supra; and
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir.
Ser. No. 76281704
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1983). As there are no limitations on the channels of
trade in either identification of goods, we, accordingly,
find that the goods travel in the same or overlapping
channels of trade.
Turning to a consideration of the marks, it is well
settled that marks must be considered and compared in their
entireties, not dissected or split into component parts so
that parts are compared with other parts. This is because
it is the entire mark which is perceived by the purchasing
public, and therefore, it is the entire mark that must be
compared to any other mark. It is the impression created
by each of the involved marks, each considered as a whole,
that is important. See Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); and
Franklin Mint Corp. v. Master Manufacturing Co., 667 F.2d
1005, 212 USPQ 233 (CCPA 1981). See also, 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:41 (4th ed. 2001).
Marks are compared in terms of their appearance,
sound, and connotation. In terms of appearance, sound and
connotation, applicant’s four-word mark and the cited
registrant’s one-word mark are quite dissimilar. While the
first part of applicant’s mark is similar to the registered
mark, that portion sounds identical to the word
Ser. No. 76281704
9
“essentials,” which is a part of the generic term for one
of applicant’s identified goods (“essential oils for
personal use”), and this misspelling would not, of course,
be recognized when applicant’s mark is pronounced. Rather,
to consumers, applicant’s mark would sound like “essential
(oils) of Perron Rigot.”
In terms of connotation, both marks contain the word
“ESCENTIALS” which, as argued by the Examining Attorney,
could connote both the idea of “necessary” and “scented.”
(In addition, as explained above, in applicant’s mark the
word “escential” could also connote “essential oils.”) In
any event, applicant’s mark, when considered as a whole,
includes the additional source-indicating words “DE PERRON
RIGOT,” translated as “of Perron Rigot.” Consumers would
perceive that the words “ESCENTIAL DE PERRON RIGOT”
specifically relate to PERRON RIGOT; and they may be
familiar with applicant’s mark PERRON RIGOT.
On this ex parte record, we find that applicant’s
mark, considered in its entirety, creates a different
commercial impression from that of the cited registered
mark. See In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238
(Fed. Cir. 1992)(VARGA GIRL and VARGAS, both for calendars,
held not confusingly similar); Food Specialty Co., Inc. v.
Kal Kan Foods, Inc., 487 F.2d 1389, 180 USPQ 136 (CCPA
Ser. No. 76281704
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1973)(KITTY for cat food and KAL KAN KITTY STEW and design
for canned cat food held not confusingly similar); Lever
Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392
(CCPA 1972)(ALL for household cleansing products and ALL
CLEAR! in stylized lettering for a household cleaner held
not confusingly similar, by majority opinion); Colgate-
Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167
USPQ 529 (CCPA 1970)(PEAK for dentifrice and PEAK PERIOD
for personal deodorants held not confusingly similar, by
majority opinion); and Electronic Realty Associates, Inc.
v. Kayser-Roth Corp., 216 USPQ 61 (TTAB 1982)(ERA for a
variety of clothing items and GOLDEN ERA for sportshirts
held not confusingly similar).
Moreover, the Examining Attorney accepted applicant’s
translation of its mark (even though the translation did
not state from what language it was translated into
English); and that translation refers to “ESCENTIAL” as
translated to “Essentials.” Applicant has submitted search
results from a private database to show that the term
“essential[s]” is a weak term with limited protection in
the personal care and related fields. The Examining
Attorney’s argument that there is only one registered mark
for the word ESCENTIALS in the relevant field
(acknowledging that there is a registration which includes
Ser. No. 76281704
11
the term for incense and one which includes the term for
fertilizer) is not sufficient to persuade us that these
marks, when considered in their entireties, are similar in
sound, appearance, connotation and commercial impression.
See Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693 (CCPA 1976).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.