Cosway (M) Sdn. Bhd. (Company No. 50118-A)

Trademark Trial and Appeal Board

Oct 22, 2012

No. 77894877 (T.T.A.B. Oct. 22, 2012)

Mailed:
October 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cosway (M) Sdn. Bhd. (Company No. 50118-A)
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Serial No. 77894877
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Martin R. Geissler and Scott T. Wakeman of Muncy Geissler
Olds & Lowe PLLC for Cosway (M) Sdn. Bhd. (Company No.
50118-A)

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Holtzman and Shaw, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Cosway (M) Sdn. Bhd. (Company No. 50118-A), a
corporation of Malaysia, has appealed from the final
refusal of the trademark examining attorney to register
BIOGLO and design, as depicted below, as a trademark for
the following goods:
Aromatics, namely, perfumes; beauty masks;
bleaching preparations for cosmetics purposes;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77894877
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cosmetics; creams, namely, face cream, cosmetic
cream, skin creams, beauty cream; deodorant for
personal use; depilatories; depilatory
preparations; extract of flowers, namely,
perfumes, extracts of flowers sold as components
of cosmetics; hair colorants; hair dyes; hair
lotions; lipsticks; lotions, namely, beauty
lotions, face lotions, skin lotions, body
lotions, hand lotions; make up; make up removing
preparations; cleansing milk for toilet purposes;
oil for perfumes and scents; cosmetic pencils;
eyebrow pencils; body talcum powder; shampoos;
skin care, namely, non-medicated skin care
preparations; soap; toiletries, namely, non-
medicated toiletries; slimming gels and shower
salt in the nature of bath and shower gels and
salts not for medical purposes, all the foregoing
goods not being for use on teeth or gums.1

The mark is described as consisting “of the stylized term
‘BIOGLO’ with the first letter ‘O’ containing a leaf.”
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark BIO GLOW, in
typed form, registered for “dentifrice for teeth and gums,”2

1 Application Serial No. 778894877, filed December 16, 2009,
based on Section 1(b) of the Trademark Act (intent-to-use).
2 Registration No. 2132070, issued January 27, 1998; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Ser. No. 77894877
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that, if used for applicant’s identified goods, it is
likely to cause confusion or mistake or to deceive.
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, 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 marks are identical in pronunciation and
connotation, and very similar in appearance and commercial
impression. They both consist of the term BIOGLO(W).
Although the registered mark has the additional letter “W”
and a space between BIO and GLOW, while applicant’s mark
has the design of a leaf, the test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison. Rather, the emphasis must be on the
recollection of the average purchaser, who normally retains
Ser. No. 77894877
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a general rather than a specific impression of trademarks.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). Because “GLO” will be perceived as the
equivalent of “GLOW,” consumers are not likely to remember
or note the presence or absence of the “W” or the space.
As for the leaf design, in general when a mark comprises
both a word and a design, the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). That is true in this case,
since these products may be recommended by word of mouth.
Further, the design element does not particularly stand out
in applicant’s mark since it is incorporated within the
letter “O”; it plays a very minor role in the impression of
the mark. Overall, the marks convey the same commercial
impression.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
With respect to the goods, the examining attorney has
made of record a substantial number of use-based third-
party registrations showing that entities have adopted a
single mark for at least some of the goods listed in
applicant’s application and the dentifrices listed in the
cited registration. See, for example, Registration No.
Ser. No. 77894877
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3229103 for, inter alia, perfumes, cosmetics, skin lotion,
shampoos and dentifrices; Registration No. 3170056 for,
inter alia, perfumery, cosmetics, hair lotions and
dentifrices; Registration No. 2498134 for, inter alia,
perfumes, color cosmetics, hair shampoo and dentifrices;
and Registration No. 3445848 for, inter alia, perfume,
cosmetics, shampoos and dentifrices. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the examining attorney has submitted
evidence that goods of the type identified in applicant’s
application and the cited registration are sold under a
single mark, and through the same channels of trade. For
example, the website Four Seasons,
www.fourseasonsproducts.com, features the Argiletz
company’s soap, shampoo and toothpaste3; the website at
www.miorganicproducts.com features “miessence” brand
toothpaste, soap and body cream; the Shaklee website,

3 “Dentifrice” is defined as “a paste, powder, liquid or other
preparation for cleaning the teeth.” Definition from
Dictionary.com, submitted with October 11, 2010 Office action.
That is, “toothpaste” is encompassed by the term “dentifrice.”

Ser. No. 77894877
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http://uss.myshaklee.com, features dentifrice and also
lists as categories for “healthy beauty” such cosmetics as
“blush,” “eyeshadows” and “eye pencil,” as well as
“cleanse,” advanced moisture” and “body care”; and the
Burt’s Bees website, www.burtsbees.com, lists as product
categories “face,” “hair” and “toothpaste.”
Applicant has argued that its goods and those of the
registrant are specifically different, pointing out that it
has amended its identification to make clear that its goods
are specifically “not being for use on teeth or gums.”
However, it is well established that it is not necessary
that goods or services be identical or even competitive in
nature in order to support a finding of likelihood of
confusion, it being sufficient that the goods or services
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990). The evidence submitted
by the examining attorney demonstrates that applicant’s and
the registrant’s goods are related. It also demonstrates
Ser. No. 77894877
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that the goods travel in the same channels of trade. These
du Pont factors favor a finding of likelihood of confusion.
In its brief applicant has stated that the only
evidence before the Board pertains to the du Pont factors
of the similarity of the marks and goods. As noted above,
the trade channels are also the same. To the extent that
any other du Pont factors are applicable, we treat them as
neutral. After considering all the evidence of record, we
find that applicant’s mark for its identified goods is
likely to cause confusion with the cited registration.
Decision: The refusal of registration is affirmed.