Co-Star Beauty Supply, Inc.

Trademark Trial and Appeal Board

Jan 14, 2005

No. 76453448 (T.T.A.B. Jan. 14, 2005)

Mailed 1/14/2005
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
Trademark Trial and Appeal Board
____________
In re Co-Star Beauty Supply, Inc.
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Serial No. 76453448
__________
Jason D. Firth of Quirk & Tratos for Co-Star Beauty Supply,
Inc.
Karen K. Bush, Trademark Examining Attorney, Law Office 105
(Chris Doninger, Managing Attorney).
____________
Before Hanak, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Co-Star Beauty Supply, Inc. (applicant) seeks to
register STARDUST SALON SYSTEMS and design in the form
shown below for “wholesale distributorship of beauty salon
equipment, product displays, fixtures, cosmetics, hair
accessories and hair care products, hair appliances, salon
garments, cotton, towels, and skin care products.” The
application was filed on September 25, 2002 with a claimed
first use date of July 15, 2001. As a point of
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clarification, as shown in applicant’s drawing (below)
there are two “plus signs” separating the three words in
applicant’s mark. However, in the cover letter attaching
its application as well as in all of its subsequent papers
applicant never referred to the word portion of its mark as
STARDUST+SALON+SYSTEMS. Moreover, the Examining Attorney
never in any of her papers depicted applicant’s mark with
“plus signs.” Because both the applicant and the Examining
Attorney have consistently depicted the word portion of
applicant’s mark as STARDUST SALON SYSTEMS, we will do
likewise.
The Examining Attorney has refused registration on two
grounds. First, citing Section 2(d) of the Trademark Act,
the Examining Attorney refused registration on the basis
that applicant’s mark, as applied to applicant’s services,
is likely to cause confusion with the mark STARDUST,
previously registered in typed drawing form for
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“fragrances; namely, perfumes, colognes and eau de
toilettes; body powders, body creams, skin and hair
lotions, personal deodorants and antiperspirants, bath gels
and bath soaps, lipsticks, powder blushes, facial powders,
lip glosses, lip balms, after shave balms, after shave
lotions, body mousses, skin cleansers, skin toners and
moisturizers, and gift kits of the aforesaid goods for the
promotion of products.” Registration No. 1,998,503.
Second, while acknowledging that applicant has disclaimed
the exclusive right to use SALON, the Examining Attorney
has refused registration because applicant did not disclaim
what she contends is the “descriptive wording” SALON
SYSTEMS in its entirety. (Examining Attorney’s brief page
6).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
We will consider first the refusal based upon the fact
that applicant has refused to disclaim the word SYSTEMS in
its mark. As just noted, the Examining Attorney contends
that the term SALON SYSTEMS in applicant’s mark is merely
descriptive of applicant’s services, and that therefore a
disclaimer of simply the word SALON (which applicant has
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4
submitted) is insufficient. In order to be held merely
descriptive, a word or term must forthwith convey
information regarding at least one significant quality or
characteristic of the relevant goods or services with a
“degree of particularity.” In re TMS Corporation of the
Americas, 200 USPQ 57, 58 (TTAB 1978); In re Entenmann’s
Inc., 15 USPQ2d 1750, 1751 (TTAB 1990) aff’d unpublished
Fed. Cir. February 13, 1991.
In support of her contention that the word SYSTEMS is
merely descriptive of applicant’s services, the Examining
Attorney merely relies upon a dictionary definition of the
word “system” first brought to the Examining Attorney’s
attention by the applicant. That definition is as follows:
“An assemblage or combination of things or parts forming a
complex or unitary whole.” Random House Webster’s
Unabridged Dictionary (2001). The Examining Attorney has
offered no other evidence showing how the word SYSTEMS is
merely descriptive of applicant’s services.
It need hardly be said that the burden of showing that
a word or term is merely descriptive, and thus must be
disclaimed, rests with the Examining Attorney. Based upon
this record, we find that the Examining Attorney has simply
not met this burden. The Examining Attorney has failed to
show how the word SYSTEMS identifies any significant
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5
quality or characteristic of applicant’s services with the
required “degree of particularity.” Accordingly, the
refusal to register based upon applicant’s refusal to
disclaim the word SYSTEMS is hereby reversed. Obviously,
our reversal does not affect applicant’s disclaimer of the
descriptive word SALON. This disclaimer remains in effect.
Turning to the refusal pursuant to Section 2(d) of the
Trademark Act, we note that in any likelihood of confusion
analysis, two key, although not exclusive, considerations
are the similarities of the marks and the similarities of
the goods or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and
differences in the marks.”).
Considering first the marks, we note that there is no
dispute that the word STARDUST is entirely arbitrary as
applied to either applicant’s services or the goods of the
cited registration. Applicant has never contended that the
word STARDUST has any meaning or even any connotative
properties as applied to its services or the goods of the
cited registration. In addition, applicant has not offered
any proof showing that third parties have used the word
Ser. No. 76453448
6
STARDUST as a mark or part of a mark for any types of goods
or services, much less goods or services that are related
to registrant’s goods or applicant’s services. Under such
circumstances the arbitrary mark STARDUST which, based on
this record has been shown to be used only by applicant and
registrant, is considered a strong mark entitled to “a wide
scope of protection.” 1 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 11:14 at page 11-
18 (4th ed. 2003).
In essence, applicant has taken the strong, arbitrary
mark STARDUST and merely added to it the words SALON
SYSTEMS and a design. Obviously, in comparing applicant’s
mark and registrant’s mark we are obligated to compare the
marks “in their entireties.” In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir. 1985). However,
in comparing the marks in their entireties, it is
completely appropriate to give less weight to a portion of
a mark that is merely descriptive of the relevant goods or
services. National Data, 224 USPQ at 751 (“That a
particular feature is descriptive … with respect to the
relevant goods or services is one commonly accepted
rationale for giving less weight to a portion of the
mark.”). Thus, in comparing registrant’s mark STARDUST
with applicant’s mark STARDUST SALON SYSTEMS and design, we
Ser. No. 76453448
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have accorded very little weight to the descriptive word
SALON. Moreover, while we have found that the word SYSTEMS
is not descriptive of applicant’s services, by the same
token, it is a weak source identifier and accordingly, we
have given less weight to the word SYSTEMS in our
likelihood of confusion analysis. Finally, with regard to
the design component of applicant’s mark, we note that said
design component is not spoken.
In sum, in terms of pronunciation, we find that the
two marks are quite similar. Obviously, applicant’s mark
would not be pronounced as “STARDUST SALON SYSTEMS and
design.” Rather, applicant’s mark would be pronounced
simply as STARDUST SALON SYSTEMS. When so pronounced,
applicant’s mark and registrant’s marks are very similar.
They both begin with the same strong, arbitrary word
STARDUST. Applicant’s mark then concludes with the weak
source identifying term SALON SYSTEMS.
Moreover, in terms of connotation or meaning, the
marks are quite similar. They both bring to mind
“stardust.”
Finally, in terms of visual appearance, we recognize
that the design in applicant’s mark causes it to be
dissimilar from the registered mark. Nevertheless, this
dissimilarity in visual appearance is outweighed by the
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fact that the marks are quite similar in terms of
pronunciation and connotation.
Turning to a consideration of applicant’s services and
registrant’s goods, we note that applicant’s wholesale
distribution services feature, among other products,
cosmetics, hair accessories and hair care products.
Likewise, registrant’s goods feature, among other goods,
various cosmetics as well as specifically “hair lotions.”
In other words, certain of the goods which applicant
distributes are legally identical to certain of
registrant’s goods. For example, there can be no dispute
that hair lotions (one of registrant’s goods) is
encompassed by the broader term “hair care products” found
in applicant’s description of the products which it
distributes.
Given the fact that applicant’s mark is quite similar
to registrant’s mark in terms of pronunciation and
connotation, and given the additional fact that certain of
the products which applicant distributes are legally
identical to certain of registrant’s products, we find that
there exists a likelihood of confusion resulting from the
contemporaneous use of both marks for their respective
goods and services. Moreover, it must be remembered that
to the extent that there are doubts on the issue of
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likelihood of confusion, we are obligated to resolve such
doubts in favor of the registrant. In re Hyper Shoppes
Inc., 837 F.2d 463, 6 USPQ2d 1025, 1027 (Fed. Cir. 1988).
Decision: The refusal to register based on the
requirement for a further disclaimer of the word “systems”
is reversed. The refusal to register based on Section 2(d)
of the Trademark Act is affirmed.