Dolphin Acquisition Corp.

Trademark Trial and Appeal Board

May 31, 2001

No. 75008309re (T.T.A.B. May. 31, 2001)

4/17/01
Paper No. 14
UNITED STAT
Tradem
In re Dolphin Acq
S
Michelle D. Kahn of Sh
Dolphin Acquisition Co
Amy L. Alfieri, Tradem
(Ronald R. Sussman, Ma
Before Hairston, Chapm
Judges.
Opinion by Bucher, Adm
Dolphin Acquisiti
filed an application f
for “cosmetics, namely
lipstick and mascara,”
1 Application serial
1995, based upon an alle
mark in commerce.THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
ES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
uisition Corp. d.b.a. Bare Essentials
________
erial No. 75/008,309
_______
eppard Mullin Richter & Hampton, LLP for
rp.
ark Examining Attorney, Law Office 109
naging Attorney).
_______
an and Bucher, Administrative Trademark
inistrative Trademark Judge:
on Corp. d.b.a. Bare Essentials has
or registration of the mark shown below:
, foundation, blush, eye shadow,
in International Class 3. 1
number 75/008,309, filed on October 20,
gation of a bona fide intention to use the
Serial No. 75/008,309
2
The Trademark Examining Attorney issued a final refusal
to register based upon Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant's mark, if used
on these cosmetic items, so resembles the mark ID, registered
for “cologne, perfume and fragrances for personal use,”2 as to
be likely to cause confusion, to cause mistake or to deceive.
Briefs have been filed, but no oral hearing was
requested. We affirm the refusal to register.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the respective goods, it is well settled
that goods need not be identical or even competitive in order
to support a finding that confusion is likely to result from
the use of similar marks thereon, it being sufficient for the
purpose that the goods are related in some manner and/or that
the circumstances surrounding their marketing are such that
2 Reg. No. 2,130,888, issued on January 20, 1998.
Serial No. 75/008,309
3
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 in some way associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992);
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978);
and In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Nonetheless, applicant argues that applicant’s goods and
registrant’s goods are used for different purposes:
… Applicant’s goods are used to make up and
apply color and texture to a face – in other
words, to create an “identity.” Hence, the
mark “i.d.” The Registrant’s goods, by
contrast, are personal fragrances used to emit
a pleasant odor.
Further, the respective goods are not used –
indeed cannot be used – for the same purposes.
Applicant’s goods cannot be used to create an
agreeable odor, and the Registrant’s goods
cannot be invoked to hide blemishes or to
enhance the shape and texture of lips or
eyelids. As there is no overlap in the uses of
the relevant goods, consumer confusion will not
result from use or registration of Applicant’s
mark. (applicant’s brief, p. 4).
By contrast, the Trademark Examining Attorney has
provided for the record seven registrations owned by third
parties where domestic manufacturers and merchants have
adopted the same mark for cosmetics and perfume. Third-party
registrations are not evidence of commercial use of the marks
shown therein, or that the public is familiar with them.
Serial No. 75/008,309
4
Nevertheless, third-party registrations which individually
cover a number of different items and which are based on use
in commerce have some probative value to the extent they
suggest that the listed goods emanate from a single 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).
Furthermore, this conclusion is consistent with earlier
decisions of this Board finding that various personal grooming
products are related. See e.g., Royal Hawaiian Perfumes, Ltd.
v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144 (TTAB
1979) [cosmetic skin cream related to suntan preparations];
and Frances Denney, Inc. v. ViVe Parfums Ltd., 190 USPQ 302
(TTAB 1976) [perfume related to cosmetics]. Hence, we believe
that purchasers, upon seeing cosmetics and perfume sold under
very similar marks, would be confused as to origin and would
believe that these personal grooming products emanated from a
single entity or were somehow associated with the same source.
Applicant has tried to draw a distinction between its
goods and those of registrant by characterizing its goods as
distributed only through applicant's “Bare Essentials” chain
of retail stores. The difficulty with applicant's argument is
that the identification of goods does not reflect this
Serial No. 75/008,309
5
limitation.3 Because there are no restrictions with respect to
channels of trade, the Board must consider that the
applicant’s and registrant’s respective goods could be offered
and sold to the same class of purchasers through all normal
channels of trade for such goods. See In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211
USPQ 639 (TTAB 1981).
Based upon the record before us, we readily conclude that
applicant’s goods are closely related to the cited
registrant’s goods.
We turn next to a consideration of the marks. Applicant
argues that the marks are different, and especially in the
context of applicant’s and registrant’s respective goods. It
is applicant’s position that the registered mark ID is a
single word and the equivalent of the word “id.” As applied
to cologne, perfume and fragrances, applicant argues that the
mark ID may well be vaguely suggestive of “the unconscious
part of the psyche.” By contrast, applicant argues that its
“i.d.” mark is a two letter initialism meaning identification
or identity. Again, according to applicant, the “i.d.” mark
may be vaguely suggestive of make up that helps to create an
identity.
3 While applicant offered at the time of its reply brief to amend
its identification of goods to include such a restriction, this was
Serial No. 75/008,309
6
However, with a number of different dictionary entries,
the Trademark Examining Attorney has shown that the upper-case
designation ID (even without any periods) is routinely defined
as “I.D.,” “identification,” “identification card” or
“identity.” These same dictionary pages having entries
showing upper-case ID as being the exact equivalent of I.D.,
also list an entry for the two letter word "id" (in all lower-
case letters) defining this entry alone as meaning “the
unconscious part of the psyche.”
Hence, we find that most members of the consuming public
will form am impression of the registered mark ID as a two-
letter initialism “I-D” – often used interchangeably with
“identification card” – and not the less familiar word “id.”
Consequently, the marks are similar in sound, appearance and
meaning.
While applicant refers to its mark as “highly stylized,”
we actually find it to be a clear portrayal of two lower case,
bold letters “i” and “d.” We do note that each of these
letters is followed by a prominent period. As shown in
applicant’s special form drawing, these periods force the
connotation of “identification,” “identification card” or
“identity,” leaving prospective consumers with none of the
much too late in the prosecution of this application for the Office
to consider this limitation.
Serial No. 75/008,309
7
ambiguity in meaning that applicant finds in registrant’s ID
mark. However, it is well recognized that purchasers are not
infallible in their recollection of trademarks and often
retain only a general or overall impression of the marks. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F2d.
586, 177 USPQ 573 (CCPA 1973); and Interco Inc. v. Acme Boot
Company, Inc., 181 USPQ 664 (TTAB 1974). Here, having
concluded that the registered mark will be seen as a two-
letter initialism “I-D,” rather than the word “id,” we find
the marks i.d. and ID to be similar in appearance, sound and
connotation and we find that they create similar overall
commercial impressions.
In summary, because applicant’s goods are closely related
to the cited registrant’s goods and because their respective
marks create similar overall commercial impressions, we find
herein that there is a likelihood of confusion.
Decision: The refusal to register is affirmed.