Cosmetic Essence, Inc.

Trademark Trial and Appeal Board

Mar 2, 2007

No. 78285127 (T.T.A.B. Mar. 2, 2007)

Mailed:
March 2, 2007
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cosmetic Essence, Inc.
________

Serial No. 78285127
_______

Sharon A. Blinkoff of Buchanan Ingersoll, P.C. for Cosmetic
Essence, Inc.

Marlene D. Bell, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Cosmetic Essence, Inc. seeks registration on the
Principal Register of the mark SIMPLYME SPA (in standard
character format) for goods identified in the application, as
amended, as follows:
“personal care products, namely, body wash,
bath and shower gels, hand and body soaps,
bath oils, body lotions and creams, body
scrubs, skin salt scrub and bath crystals,
non medicated tablets and non medicated
salts, fragrant body splash, body sprays and
body mists and room fragrancing gels and room
fragrances, and hair care preparations,
namely shampoos and conditioners” in
International Class 3.1

1 Application Serial No. 78285127 was filed on August 8, 2003,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78285127
- 2 -
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
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney asserts that applicant’s mark, when used in
connection with the identified goods, so resembles the
trademark SIMPLY SPA (in standard character format) in two
registrations owned by the same party, registered in
connection with:
“personal care products for the face, hands,
body, feet, nails, and hair, namely, lip
gloss, lip balm, lip gel, body and bath oils,
skin lotions, body lotions, hand lotions,
hand creams, shea butter, shower gels, milk
bath, bubble bath, soaps, body wash, non-
medicated bath salts, bath powder, bath
fizzies, potpourri, hair shampoos, nail care
preparations and polish, body scrubs, seaweed
scrub, hair conditioner, body powder, clay
mask, facial masks, cosmetic glitter gel,
cosmetic glitter spray, and room fragrances
in spray form” in International Class 3;2

and

“candles” in International Class 4,3
as to be likely to cause confusion, to cause mistake or to
deceive.

2 Registration No. 2804445 issued on January 13, 2004, claiming
first use anywhere and first use in commerce at least as early as
June 1, 2001.
3 Registration No. 2804446 issued on January 13, 2004, claiming
first use anywhere and first use in commerce at least as early as
June 1, 2001.

Serial No. 78285127
- 3 -
Applicant and the Trademark Examining Attorney have
fully briefed the case. Applicant requested an oral hearing
that was scheduled for December 5, 2006, but then applicant
asked that the hearing be cancelled.
We affirm the refusal to register.
In arguing for registrability, applicant contends that
there are on the federal trademark register numerous
registrations for personal care products similar to the
involved goods where the marks include the words “Spa”
and/or “Simply.” Applicant argues that inasmuch as the
cited mark is weak, the word “Me” is sufficient to
distinguish applicant’s mark from registrant’s mark.
Applicant continues by arguing that consumers will exercise
great care in selecting personal care and beauty items.
Finally, applicant contends that the Trademark Examining
Attorney has failed to provide sufficient evidence that “an
appreciable number of ordinary prudent purchasers” are
likely to be confused with the cited mark through its use of
SIMPLYME SPA in connection with personal care products.
By contrast, the Trademark Examining Attorney contends
that the marks of applicant and of registrant are
confusingly similar, and that the goods are identical or
closely related, such that there exists a likelihood of
confusion. In fact, the Trademark Examining Attorney argues
Serial No. 78285127
- 4 -
that the only three marks registered for personal care
products, room fragrances and candles that share both the
words “Simply” and “Spa” are those involved in this appeal.
She argues that these identically and otherwise closely
related goods will travel in the same channels of trade and
will be encountered by the same general consumers who are
likely to mistakenly believe that the goods emanate from the
same producer. As to the degree of care exercised by the
buyers, she contends that these are inexpensive consumer
products that are all routinely subject to impulse
purchasing decisions.
Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion.
Our determination of likelihood of confusion is based upon
our analysis of all of the probative facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. See 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, although not exclusive,
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
Serial No. 78285127
- 5 -
1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The goods and services
We turn first to the du Pont factor focused on the
relationship of the goods as identified in the application
and registrations.
As pointed out by the Trademark Examining Attorney,
“the application and the first cited registration reference
identical goods in International Class 003, such as body
wash, body lotion and shampoo” (Trademark Examining
Attorney’s appeal brief, unnumbered p. 6), a listing to
which we might well add “soaps,” “bath oils,” “shower gels,”
“hair conditioners” and “room fragrances.” The balance of
personal care products listed in applicant’s and
registrant’s respective identifications of goods in
International Class 3 are, on their face, all closely
related.
As to the cited registration for candles, the Trademark
Examining Attorney placed into the record the following
third-party registrations having marks registered for
candles as well as a range of personal care products of the
kind identified by applicant.
Serial No. 78285127
- 6 -

for “personal care products, namely,
body oils, body lotion, body wash,
skin cleansing body bars, body balms,
hand lotion, hand wash, massage balm,
massage oils, bath and shower gels,
bath salts, mineral bath powers, foot
balms, foot soaks, cocoa butter for
cosmetic use, vegetable oils for
cosmetic use, essential oils for
personal use, non-medicated lip care
preparations, hair shampoo, hair
conditioner, hair relaxers, hair
detanglers, hair styling foams, hair
styling gels, hair spray, and sachet-
like eye pillows containing
fragrances” in International Class 3;
“aromatherapy candles” in
International Class 4;4
JUNIPER BREEZE for “personal care products, namely,
body lotion, shower gel, body cream,
body wash, hand soap, body soap,
moisturizing hand cream, body scrub,
and room fragrancing gels; scented
room sprays,” in International Class
3;
“candles” in International Class 4;5
CANDY CARE for “personal care products, namely,
bubble bath, shower gel, bath gel,
body scrubs, soaps, skin creams, skin
lotions, lip gloss” in International
Class 3;
“candles” in International Class 4;6

4 Registration No. 2815074 issued on February 17, 2004 based
upon claims of first use anywhere and first use in commerce in
both classes at least as early as September 1, 2001.
5 Registration No. 2621534 issued to Bath & Body Works, Inc. on
September 17, 2002 based upon claims of first use anywhere and
first use in commerce in International Class 3 at least as early
as May 31, 1996 and claims of first use anywhere and first use in
commerce in International Class 4 at least as early as October 31,
1997.
6 Registration No. 2814716 issued on February 17, 2004 based
upon claims of first use anywhere and first use in commerce in
International Class 3 at least as early as March 2002 and claims
of first use anywhere and first use in commerce in International
Class 4 at least as early as June 2002. No claim is made to the
exclusive right to use the word “Care” apart from the mark as
shown.
Serial No. 78285127
- 7 -
GODDESS GIRL for “personal care products for
women, namely, bath gels, shower
gels, bath soaps, body soaps, hand
soaps, bath salts, body scrub, bubble
bath, milk bath, hand lotions, body
lotions, skin moisturizing creams,
skin moisturizing lotions, bath oils,
body powders, massage oil; and
combinations of the foregoing goods
sold as a unit” in International
Class 3;
“candles” in International Class 4;7
FOR EVERY BODY for “personal care products, namely,
body oils, body lotions, perfumes,
essential oils for personal use, and
colognes” in International Class 3;
“Candles” in International Class 4;8
PAPERWHITES ISABELL for “personal care products, namely,
body lotion, body scrub, perfume,
cologne, Eau de toilette and shower
gel” in International Class 3;
“candles” in International Class 4;9
IDENTITY for “bath, beauty and personal care
products, namely, non-medicated skin
care preparations, namely, lotions
for moisturizing the body; body
shimmer, bath products, namely, bath
gel, body mist, body lotions; hair
care preparations, namely shampoos,
conditioners, sprays and gels” in
International Class 3;
“scented candles” in International
Class 4;10

7 Registration No. 2736349 issued on July 15, 2003 based upon
claims of first use anywhere and first use in commerce in both
classes at least as early as July 2002. No claim is made to the
exclusive right to use the word “Girl” apart from the mark as
shown.
8 Registration No. 2662837 issued on December 17, 2002 based
upon claims of first use anywhere and first use in commerce in
both classes at least as early as November 6, 1995.
9 Registration No. 2392139 issued to Perfumes Isabell, Inc. on
October 3, 2000, based upon claims of first use anywhere and first
use in commerce in both classes at least as early as September
1998.
10 Registration No. 2729799 issued to Albertson’s, Inc. on June
24, 2003, based upon claims of first use anywhere and first use in
commerce in both classes at least as early as December 2000.
Serial No. 78285127
- 8 -
BIZZY BODY BUBBLES for “personal care products, namely
soap” in International Class 3;
“candles” in International Class 4;11

These third-party registrations, all of which are based
on use in commerce, provide support for the Trademark
Examining Attorney’s position that candles are related to
personal care products inasmuch as they have been registered
by the same source under the same mark. See In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
[Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to suggest
that such goods or services are the type which may emanate
from a single source”]. See also In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Additionally, the Trademark Examining Attorney has
included in the record screen prints of web pages from an
Internet search showing candles combined with personal care
products in promotional websites placed by, inter alia,
Attitudes, Ltd,12 Candles Forever,13 Fredericksburg Herb Farm14

11 Registration No. 2352768 issued to Dial Brand, Inc. on May
23, 2000, based upon claims of first use anywhere and first use in
commerce in both classes at least as early as March 1999.
12 www.shopattitudes.com/, 07/21/2005.
13 www.candlesforever.com/burts.html, 07/21/2005.
14 www.fredericksburgherbfarm.com/, 07/21/2005.
Serial No. 78285127
- 9 -
and Sensia.15
Accordingly, this du Pont factor favors a finding of
likelihood of confusion based on both cited registrations.
Channels of trade and classes of purchasers
As seen in the third-party registrations and websites
placed into the record by the Trademark Examining Attorney,
candles – and especially scented or aromatic candles –
clearly move in the same channels of trade as do personal
care products. The record demonstrates that this includes,
inter alia, retail stores and online shopping by way of the
Internet.
As to the care with which consumers approach the
purchase of personal care products, applicant argues without
support that given the nature of these respective goods
(i.e., “products used for personal care and beauty”), “it is
expected that consumers will take greater care in reading
the product labels and making their product selections.”
(Applicant’s brief, p. 9). The record convinces us that the
Trademark Examining Attorney is correct in arguing that the
goods of applicant and registrant “are inexpensive consumer
products consisting primarily of personal care products,
room fragrances and candles that are routinely subject to

15 www.sensia.com/archipelago2.htm, Morning Mint Candle,
07/21/2005.
Serial No. 78285127
- 10 -
impulse purchasing.” (Trademark Examining Attorney’s appeal
brief, unnumbered p. 7).
Hence, on these two related du Pont factors -- the
similarity of established, likely-to-continue trade channels
and the conditions under which and buyers to whom sales will
be made – we find that the same classes of ordinary
consumers would find these goods offered through the same
channels of trade, and hence, these two factors also favor
the position of the Trademark Examining Attorney.
The number and nature of similar marks on related goods
Throughout its brief, despite having introduced no
supporting evidence, applicant emphasizes the “large number
of similar marks in the class”:
“… There are as noted over 700 references
that include SPA in the class and some 150
that include SIMPLY, which are all again for
Class 3 goods. Again, fiven [sic] the common
use of the common portions of the marks for
the same or similar goods demonstrates in
fact that there is no confusion caused by the
common adoption and use of these words.”

(Applicant’s brief, p. 9). We note that applicant admits
that it has gone beyond the exact form of the words, to
include “marks which were based upon or contained the words”
(applicant’s appeal brief, p. 2). Hence, the alleged 150
occurrences of marks based upon or containing some form of
the word “simply” would actually include all those composite
marks having somewhere within the mark, for example, the
Serial No. 78285127
- 11 -
word “simple.” Moreover, this number of allegedly similar
marks would include marks having totally different
commercial impressions as registered for International Class
3 goods not at all related to personal care products or
candles.16
In response, the Trademark Examining Attorney points
out that applicant’s arguments above are misleading:
“…[A]pplicant contends that each term appears
numerous times in the Office’s Registers.
However, the applicant failed to provide
evidence [soft copies of registrations] to
support its argument…

(Trademark Examining Attorney’s denial of applicant’s
request for reconsideration, July 2005, p. 4). In fact, we
would point out that not only does the Board not take
judicial notice of third-party registrations, see, e.g.,
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974), but there
is not even a summary listing in the record of the
“references” to which applicant cites.
By contrast, the Trademark Examining Attorney argues
that applicant’s mark and Registrant’s two marks “are the
only three listed marks that share both the words ‘Simply’
and ‘Spa’ to identify personal care products, room
fragrances and candles.” (Trademark Examining Attorney’s

16 Hypothetically, this could include a registration for the
mark HORSE SENSE PURE AND SIMPLE for “leather conditioner” in
International Class 3.
Serial No. 78285127
- 12 -
brief, unnumbered p. 5). Accordingly, on this record, we
conclude that, indeed, the marks involved herein are the
only three registered marks having both words “Simply” and
“Spa” identifying personal care products, room fragrances or
candles.
In a similar vein, applicant argued in its response of
September 3, 2004, that it was “manifestly unjust” to deny
registration herein inasmuch as the Trademark Office had
allowed the cited marks to register over applicant’s two
prior-filed, now-abandoned applications identifying the same
personal care products in International Class 3. However,
inasmuch as those earlier application were for different
marks (e.g., SIMPLY17 and SIMPLYME18), the Office’s now
refusing SIMPLYME SPA on the basis of the intervening
SIMPLY SPA can hardly be viewed as improper.
The marks
The critical du Pont factor that the Trademark
Examining Attorney and applicant discuss in their briefs
involves the similarities or dissimilarities in the

17 Serial No. 78115545 was filed on March 18, 2002; abandoned on
February 23, 2006, upon applicant’s failure to file a statement of
use.
18 Serial No. 78115539 was filed on March 18, 2002; abandoned on
September 1, 2006, upon applicant’s failure to file a statement of
use.

Serial No. 78285127
- 13 -
appearance, sound, connotation and commercial impression of
the respective marks. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
We note, in discussing this factor, that the Court of
Appeals for the Federal Circuit has held that when marks
appear on “virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
Under actual market conditions, consumers generally do
not have the luxury of making side-by-side comparisons. The
proper test in determining likelihood of confusion is not a
side-by-side comparison of the marks, but rather, the
decision must be based on the similarity of the general
overall commercial impressions engendered by the involved
marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Applicant’s mark is SIMPLYME SPA and opposer’s mark is
SIMPLY SPA. There are obvious similarities in the
appearance and pronunciation of the two marks in that both
begin with the word “Simply” and end with the stand-alone
Serial No. 78285127
- 14 -
word, “Spa.” In fact, these two marks are similar enough
overall that the differences may not even be noticed.
If this small difference in the middle of the marks is
noticed – with applicant’s mark containing the added letters
“me” as a suffix to the word “Simply” -- we find that this
difference is not sufficient to distinguish the marks as to
sound or appearance. Moreover, the connotations are similar
in that prospective customers would likely see applicant’s
mark as meaning “Simply Spa for Me.”
Thus, although there are some differences in the marks,
we find that the marks are similar in their entireties as to
appearance, sound, connotation and commercial impression.
Conclusion
We find that: applicant’s goods are identical or
otherwise closely related to registrant’s goods in both
cited classes; the marks of applicant and of registrant are
confusingly similar inasmuch as the suffix “me” buried in
the middle of the composite mark is not sufficient to
distinguish applicant’s mark from registrant’s mark; the
cited mark is not shown on this record to be a weak mark –
to the contrary, we find that the only three marks
registered for personal care products, room fragrances and
candles that share both the words “Simply” and “Spa” are
Serial No. 78285127
- 15 -
involved in this appeal; these identically and otherwise
closely related goods will travel in the same channels of
trade and will be encountered by the same general consumers;
there is no proof that consumers will exercise great care in
selecting these inexpensive consumer products that are all
routinely subject to impulse purchasing decisions; and an
appreciable number of ordinary prudent purchasers are likely
to be confused with the cited mark through applicant’s use
of SIMPLYME SPA in connection with personal care products.
Decision: The refusal to register based upon Section
2(d) of the Lanham Act is hereby affirmed as to both cited
registrations.