Formula 7Venz LLC

Trademark Trial and Appeal Board

Oct 2, 2017

No. 86264786 (T.T.A.B. Oct. 2, 2017)

This Opinion is Not a
Precedent of the TTAB

Hearing: September 28, 2017 Mailed: October 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Formula 7Venz LLC
_____

Serial No. 86264786
_____

James C. Wray, Esq. for Formula 7Venz LLC.

Meredith Maresca, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Bergsman, Masiello and Lynch,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Formula 7Venz LLC (“Applicant”) seeks registration on the Principal Register of
the mark MAUI ISLAND SECRET (in standard characters) for “sun tan cremes,
lotions, oils and gels, sun browning creme and oil, after sun suntan sealing lotion and
non-medicated gel for the treatment and relief of sunburns, sold in retail stores of
others,” in Class 3.1 Applicant disclaimed the exclusive right to use the word “Maui.”

1 Application Serial No. 86264786 was filed on April 29, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as August 1999.
Serial No. 86264786
- 2 -
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark when used with the identified goods so resembles the registered
marks MAUI ISLAND FORMULA (standard characters)2 and MAUI ISLAND
FORMULA (stylized),3 shown below, both for “non-medicated skin and hair care
preparations,” in Class 3, as to be likely to cause confusion.

Registrant disclaimed the exclusive right to use the words “Maui” and “Formula” in
both registrations.
Also, the Trademark Examining Attorney refused to register Applicant’s mark
because Applicant failed to comply with the requirement to submit a specimen
showing its mark used in commerce for the goods identified in the application.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.

2 Registration No. 4216847, registered October 2, 2012.
3 Registration No. 4216848, registered October 2, 2012.
Serial No. 86264786
- 3 -
I. Preliminary Issues
A. Exhibits attached to Applicant’s Brief.
Applicant attached copies of exhibits previously submitted to its brief. The
Trademark Examining Attorney objected to the exhibits on the ground that “[t]he
record in an application should be complete prior to the filing of an appeal,” citing
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).4 Applicant explained that the
“exhibits were collected in one place for the convenience of the Board.”5
While exhibits to briefs are not explicitly prohibited by the Trademark Rules, the
Board ignores them because they comprise either untimely evidence or unnecessary
copies of timely evidence. Some parties to Board cases are under the mistaken
impression that attaching previously-filed evidence to a brief (and citing to the
attachments, rather than to the original submission) is a courtesy or a convenience
to the Board. It is neither. When considering a case for final disposition, the entire
record is readily available to the panel. Because we must determine whether such
attachments are properly of record, citation to the attachment requires examination
of the attachment and then an attempt to locate the same evidence in the record
developed during prosecution, requiring more time and effort than would have been
necessary if citations were directly to the prosecution history. See Life Zone Inc. v.
Middleman Group Inc., 87 USPQ2d 1953, 1955 n.4 (TTAB 2008). Suffice it to say, we
give the exhibits attached to the brief no consideration.

4 Trademark Examining Attorney’s Brief (10 TTABVUE 3).
5 Applicant’s Reply Brief, p. 1 (13 TTABVUE 2).
Serial No. 86264786
- 4 -
B. Google Search Result List as an exhibit to Applicant’s request for
reconsideration.

Applicant attached a Google search result list for “Maui Island” as an exhibit to
its August 14, 2016 Request for Reconsideration.6 A list of Internet search results
generally has little probative value, because such a list shows too little of the context
in which the term is used on the listed web pages. In re Thomas Nelson, Inc., 97
USPQ2d 1712, 1715 (TTAB 2011); see In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d
1828, 1833 (Fed. Cir. 2007) (deeming Google® search results that provided very little
context of the use of ASPIRINA to be "of little value in assessing the consumer public
perception of the ASPIRINA mark"); In re Tea and Sympathy, Inc., 88 USPQ2d 1062,
1064 n.3 (TTAB 2008) (finding truncated Google® search results entitled to little
probative weight without additional evidence of how the searched term is used); In re
Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (rejecting an applicant’s attempt to
show weakness of a term in a mark through citation to a large number of Google®
"hits" because the "hits" lacked sufficient context); In re King Koil Licensing Co., 79
USPQ2d 1048, 1050 (TTAB 2006) (noting that web page links "do little to show the
context within which a term is used on the web page that could be accessed by the
link"); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002) (finding the print-out
of Internet search results to be of little probative value due to insufficient text to
determine the nature of the information or its relevance); In re Fitch IBCA Inc., 64
USPQ2d 1058, 1060 (TTAB 2002) (noting that "[e]vidence of actual use of a phrase

6 4 TTABVUE 15-26.
Serial No. 86264786
- 5 -
by a website has far greater probative value" than a search summary); see also TMEP
§ 710.01(b) (April 2017). Such is the case here where some of the results refer to
“Maui Island,” but we cannot tell whether the actual webpages refer to “Maui Island,”
nor can we perceive the context in which that term is used. In view thereof, the Google
hit list has little, if any, probative value.
The better practice is to submit copies of the website pages that show how the
term is actually used.
C. Applicant’s ownership of cancelled Registration No. 2769742.
In its application, Applicant claimed ownership of Registration No. 2769742 for
the mark MAUI ISLAND SECRET (typed drawing) for “medicated skin and hair care
products, namely, sunburn lotions,” in Class 5.7 However, that registration was
cancelled in 2014 because Applicant failed to file a declaration of use pursuant to
Section 8 of the Trademark Act, 15 U.S.C. § 1058, and a renewal application pursuant
to Section 9 of the Trademark Act, 15 U.S.C. § 1059. While it is unfortunate that
Applicant’s prior registration was not maintained, our precedent is clear; a cancelled
or expired registration has no probative value other than to show that it once issued
and it is not entitled to any of the statutory presumptions of Section 7(b) of the
Trademark Act. In Re Ginc UK Limited, 90 USPQ2d 1472, 1480 (TTAB 2007); see
also Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not provide constructive
notice of anything.”); In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB

7 Registered September 30, 2003.
Serial No. 86264786
- 6 -
1979) (cancellation “destroys the Section [7(b)] presumptions and makes the question
of registrability ‘a new ball game’ which must be predicated on current thought.”).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on 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, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
Serial No. 86264786
- 7 -
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
A. The similarity or dissimilarity and nature of the goods.
As indicated above, Applicant is seeking to register its mark MAUI ISLAND
SECRET for “sun tan cremes, lotions, oils and gels, sun browning creme and oil, after
sun suntan sealing lotion and non-medicated gel for the treatment and relief of
sunburns, sold in retail stores of others” and Registrant’s mark MAUI ISLAND
FORMULA (standard characters and stylized) is registered for “non-medicated skin
and hair care preparations.”
By virtue of Registrant’s broad description of goods (i.e., “non-medicated skin …
care preparations”), Registrant’s goods encompass Applicant’s sun care products and,
therefore, the goods are in part identical. See In re Hughes Furniture Indus., Inc.,
114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”). In this regard, the Internet website excerpts from Sephora,8

8 February 15, 2015 Office Action (TSDR 18). Citations to TSDR pages are in the .pdf format.
The menu under “skin care” includes the categories “cleanse,” “moisturize,” “treat,”
“sunscreen” and “self-tanning.”
Serial No. 86264786
- 8 -
Ulta,9 Beauty.com,10 B-Glowing,11 SkinCareRX,12 and Kiehl’s13 show that skin care
preparations include sun care products.
Moreover, there are numerous Internet website excerpts showing the same entity
selling sun care and skin care products, as well as hair care products, under the same
mark.14 The following are representative:
• Kiehl’s sunscreen, creams, and lotions15 and moisturizers, cleansers, scrubs,
masks and serums,16 as well as hair conditioners and shampoos;17
• Neutrogena sunscreen, sunscreen lotion, sunless tanning lotion, facial cleansers,
moisturizers, shampoos, and conditioners; 18 and
• Aveeno sunscreen lotion, moisturizing hand cream, moisturizing lotion, body
wash, moisturizing lotion with sunscreen protection, shower and bath oil, shampoo
and conditioner.19

9 Id. at 19. “Suncare” is presented as a category of “Skin [Care].”
10 Id. at 20. Sun tan creams and after sun lotions and gels are listed as skin care products.
11 August 28, 2015 Office Action (TSDR 92). Sunscreen is listed as a skincare product.
12 Id. at 94-98. The website identifies after-sun care and sunscreens as skincare products.
13 Id. at 101. Sun care products are listed as a category of skin care.
14 See the exhibits attached to the February 15, 2015 and March 8, 2016 Office Actions
(6 TTABVUE).
15 6 TTABVUE 34-36.
16 February 15, 2015 Office Action (TSDR 59-60).
17 Id. at 61-64.
18 March 8, 2016 Office Action (6 TTABVUE 103-115).
19 March 8, 2016 Office Action (6 TTABVUE 37-39) and February 15, 2015 Office Action
(TSDR 65-76).
Serial No. 86264786
- 9 -
Finally, the Trademark Examining Attorney submitted copies of 18 third-party
registrations for goods listed in both the application and registration at issue. Third-
party registrations based on use in commerce that individually cover a number of
different goods may have probative value to the extent that they serve to suggest that
the listed goods are of a type that may emanate from the same source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Representative
registrations, with relevant portions of the identifications, are listed below.
Mark Reg. No. Goods

MOMIN 4700310 Shampoo and conditioner; after sun
creams, gels, lotions, milks, and oils; body
lotions; cosmetic sun-protecting and sun-
tanning preparations; sunscreen; non-
medicated skin creams

INTERLOCKING
CHEMISTRY
4700663 Non-medicated skin care preparations;
cosmetic sunscreen preparations;
sunscreen creams; skin moisturizers; skin
and body topical lotions; shampoo and
conditioner

4846839 Non-medicated ointments for the
prevention and treatment of sunburn; non-
medicated skin care preparations

FRUITS TO THE ROOTS 4706800 Cosmetics; after sun creams; shampoo and
conditioner; non-medicated skin care
preparations

DR. ROBINA SKIN
CARE SOLUTION
4683928 Non-medicated skin care preparations;
shampoos; shampoo-conditioner; after sun
creams, gels and moisturizers; non-
medicated ointments for the prevention of
and treatment of sunburn

Serial No. 86264786
- 10 -
In view of the foregoing, we find that the goods are related.
B. Established, likely-to-continue channels of trade.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of goods in the cited registration, it is presumed that Registrant’s
goods move in all channels of trade normal for those goods, including “retail stores of
others,” and that they are available to all classes of purchasers for those goods. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (affirming Board finding that where the identification is unrestricted, “we must
deem the goods to travel in all appropriate trade channels to all potential purchasers
of such goods”); see also Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139, 140 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992). Thus, the restriction “sold in retail stores of others” in the application is not a
material factor in our likelihood of analysis because Registrant’s description of goods
is not restricted to any specific channels of trade.
Likewise, we do not accept Applicant’s argument that Registrant’s goods are not
available in retail stores because they are provided as amenities in hotel rooms.20 In
considering the scope of the cited registration, we look to the registration itself, and
not to extrinsic evidence about the registrant’s actual goods, customers, or channels

20 Applicant’s Brief, p. 8 (8 TTABVUE 9); see also Applicant’s Brief, p. 1 (8 TTABVUE 2) (“The
identification distinguishes applicant’s goods from goods in the cited mark, which are
commonly referred to as amenities provided free in hotel rooms.”); Applicant’s Brief, p. 2
(8 TTABVUE 3) (“the cited goods are free amenities found in hotel rooms in two-ounce
containers.”).
Serial No. 86264786
- 11 -
of trade. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987) (quoting CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983)); Paula Payne Prods. v. Johnson Publ’g Co.,
177 USPQ at 77 (“Trademark cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of goods”); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ
139).
Moreover, because the goods are in part identical, we must presume that the
channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d
1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). This presumption
remains valid even though Applicant’s identification of goods includes a restriction
on trade channels because Registrant’s identification contains no restriction.
C. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. In comparing the marks, we
Serial No. 86264786
- 12 -
are mindful that where, as here, the goods are in part identical, the degree of
similarity necessary to find likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1905 (TTAB 2007)); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
Serial No. 86264786
- 13 -
106, 108 (TTAB 1975). Because the goods at issue are skin and hair care preparations,
including sun care products, the average customer is an ordinary consumer.
Applicant’s mark MAUI ISLAND SECRET is similar to Registrant’s standard
character mark MAUI ISLAND FORMULA because they share the words “Maui
Island” and, to that extent, they are identical in appearance, sound, and meaning.
With respect to Registrant’s stylized display of MAUI ISLAND FORMULA, the
minimal stylization of the lettering is not so distinctive as to distinguish the marks.
See e.g., Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1284 (TTAB 2014);
Jansen Enter. Inc. v. Rind, 85 USPQ2d 1104, 1109 (TTAB 2007); Wet Seal Inc. v. FD
Mgt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). This is especially true because
Applicant’s mark is in standard characters. Marks presented in standard characters
are not limited to any particular depiction. The rights associated with a mark in
standard characters reside in the wording, and not in any particular display. Thus,
Applicant seeks registration of a mark that might be depicted in any manner,
regardless of the font style, size, or color, and might at any time in the future be
displayed in a manner similar to Registrant’s mark. In re Viterra Inc., 101 USPQ2d
at 1909-11; Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983) (rejecting argument that for purposes of determining whether
two marks are similar, a mark in a typed drawing (equivalent to modern standard
character format) is distinct from such mark in a logo format; “[b]y presenting its
Serial No. 86264786
- 14 -
mark in a typed drawing, a difference cannot legally be asserted by that party”
(emphasis in original)).
The marks at issue differ in appearance and sound by virtue of their final words,
SECRET and FORMULA, respectively. However, in the context of these goods,
“Secret” typically refers to “Formula,”21 such that the marks have an overall similar
impression. Applicant contends, however, that when the marks are considered in
their entireties, they are distinguishable because “Maui Island” is a geographic
location that would not be recognized as a source indicator and the words “Secret”
and “Formula” are entirely different.22
Maui Island is a geographic location well known in the
United States and around the world. Maui Island has no
trademark significance.23 Maui Island is a well-known
tourist destination for sun, beaches and outdoor recreation.
The distinguishing features of the marks are FORMULA
and SECRET. Therefore, without the Geographic Location
significance of Maui Island, the marks widely differ, and
there is no likelihood of confusion.24
Applicant argues, in essence, that “Maui Island” is a unitary term describing the
island of Maui. This is belied by the fact that Applicant disclaimed the exclusive right
to use the name “Maui,” not “Maui Island.” Also, Registrant disclaimed the exclusive

21 See, e.g., February 15, 2015 Office Action (TSDR 13-17).
22 Applicant’s Brief, pp. 1-3 (8 TTABVUE 2-4).
23 If this were true, there would be nothing in the registered mark except nondistinctive and
disclaimed matter. This is untenable, because under Section 7(b) of the Trademark Act,
15 U.S.C. § 1057(b), the registered mark is presumed to be valid, and the presumption of
validity includes a presumption of distinctiveness. Tea Board of India v. Republic of Tea Inc.,
80 USPQ2d 1881, 1899 (TTAB 2006).
24 Applicant’s Brief, p. 3 (8 TTABVUE 4).
Serial No. 86264786
- 15 -
right to use the name “Maui,” not “Maui Island.” If “Maui Island” were a unitary
name for a well-known geographic location, Applicant should have disclaimed the
exclusive right to use “Maui Island.”25 Even assuming that “Maui Island” is
nondistinctive, it still must be considered when analyzing the similarity or
dissimilarity of the marks because the marks must be considered in their entireties,
not from their elements separated and considered in detail. Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015).
Nevertheless, we review what the record reveals as to whether “Maui Island” is a
recognized unitary name for “Maui.”
Maui is the second-largest island in the state of Hawaii.26 The Columbia
Gazetteer of the World Online refers to Maui per se, not Maui Island.27 Likewise,
the Encyclopaedia Britannica refers to Maui per se, not Maui Island.28 On the
other hand, the Columbia Gazetteer of the World Online and the
Encyclopaedia Britannica both describe Lahaina as a city on the west coast of
“Maui island.”29

25 When this was discussed at the oral hearing, Applicant offered to disclaim the exclusive
right to use the term “Maui Island.”
26 “Maui,” Columbia Gazetteer of the World Online (2014) (columbiagazetteer.org)
attached to the August 13, 2014 Office Action (TSDR 15).
27 Id.
28 “Maui,” Encyclopaedia Britannica (britannica.com) attached to the February 15, 2015
Office Action (TSDR 83-84).
29 “Lahaina,” Columbia Gazetteer of the World Online (2014) (columbiagazetteer.org)
attached to the August 13, 2014 Office Action (TSDR 17); “Lahaina,” Encyclopaedia
Britannica (britannica.com) attached to the February 15, 2015 Office Action (TSDR 86).
Serial No. 86264786
- 16 -
The thesaurus posted on thefreedictionary.com website provides a definition of
“Maui Island” as “the second largest of the Hawaiian Islands.”30 On the other hand,
Dictionary.com defines “Maui,” not “Maui Island,” as “an island in central Hawaii.”31
The Maui website at gohawaii.com,32 the Oyster.com website33 and the YELP
website34 refer to Maui per se, not Maui Island. Likewise, Applicant refers to Maui
per se, not Maui Island, on its website.
For 35 years, the founders of Maui Island Secret have
worked, lived and played on the island. We have brought
many different skincare and suncare products to Maui
from the mainland, but never were completely satisfied
with what we were offering the island residents and
visitors.35
* * *
A commitment to quality and a unique approach to product
development Maui Island Secret products were not born in
a lab, but on the beaches of Maui, researched and
developed for sun worshipers and active people.36

30 August 14, 2015 Request for Reconsideration (4 TTABVUE 13).
31 Based on the Random House Dictionary (2017); see also Merriam-Webster
Dictionary (merriam-webster.com). The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010).
32 August 28, 2015 Office Action (TSDR 16-18).
33 Id. at TSDR 19-22.
34 Id. at TSDR 23-27.
35 Mauiislandsecret.com attached to the August 13, 2014 Office Action (TSDR 18).
36 Mauiislandsecret.com attached to the August 13, 2014 Office Action (TSDR 19).
Serial No. 86264786
- 17 -
See also Applicant’s advertisement featuring a photograph of MAUI ISLAND
SECRET BROWNING FORMULA with the tagline “A Maui Original Tanning
Secret.”37
Based on the foregoing evidence, we find consumers viewing the mark will not
necessarily perceive “Maui Island” as a unitary geographically descriptive reference.
Rather, Applicant’s mark MAUI ISLAND SECRET may be perceived either as MAUI
ISLAND – SECRET or as MAUI – ISLAND SECRET brand sun care products.38 By
the same token, Registrant’s standard character mark may be perceived as either
MAUI ISLAND – FORMULA or MAUI – ISLAND FORMULA. In either case, MAUI
– ISLAND SECRET or MAUI ISLAND – SECRET is similar to MAUI – ISLAND
FORMULA or MAUI – ISLAND FORMULA.
In Registrant’s stylized mark, shown below, groups the words ISLAND
FORMULA together (instead of MAUI ISLAND).

37 February 10, 2015 Response to an Office Action (TSDR 12).
38 Applicant’s trade dress as shown on its labels, presented infra, display the mark as MAUI
ISLAND – SECRET, thus, providing an alternate commercial impression. In this case, where
Applicant is seeking to register a standard-character mark, Applicant’s trade dress may not
be used to show that the marks engender different commercial impressions because the trade
dress might be changed at any time. Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d
350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992) (quoting Vornado, Inc. v. Breuer Electric Mfg.
Co., 390 F.2d 724, 156 USPQ 340, 342 (CCPA 1968) (“Ordinarily, for a word mark we do not
look to the trade dress, which can be changed at any time.”); Kimberly Clark Corp. v. H.
Douglas Enterprises, Ltd., 774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed. Cir. 1985).
Nevertheless, trade dress may be used to show that the marks engender the same commercial
impression. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1284 (Fed. Cir. 1984).
Serial No. 86264786
- 18 -
However, Applicant’s mark could be displayed in a similar format, with ISLAND
SECRET grouped together in smaller letters beneath a larger display of MAUI.
The Trademark Examining Attorney contends that the “Maui Island” portion of
both marks is dominant because it appears as the first part of both marks and because
the words “Formula” or “Secret” often appear on skin care preparations.39 In support,
the Examining Attorney refers to excerpts from websites attached to the February
15, 2015 Office Action using “Formula” and “Secret” together to advertise skin
preparations. For example,
• Viviane website (no url) advertises that its “secret formula of Aloe and Vera and
select botanical extracts promotes healing, calms irritated skin and forms a protective
barrier to keep moisture in”;40
• TheSecretsOfBeautifulSkin.com advertises “Natural Skincare Products The
Secret Formula For Great Skin”;41
• An Amazon.com entry for Hanbul Reorom Secret Formula Total Eye Care;42 and
• Ancient Earth website (no url) advertises “How our secret formula helps problem
skin.”43

39 Trademark Examining Attorney’s Brief (10 TTABVUE 9). There is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular feature
of a mark, such as a common dominant element, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
40 February 15, 2015 Office Action (TSDR 13). The Viviane website categorizes “sun care”
products as a subcategory of “skin care” products.
41 Id. at TSDR 14.
42 Id at TSDR 15.
43 Id. at TSDR 16.
Serial No. 86264786
- 19 -
Even Applicant uses “Secret” and “Formula” together on its labels.44

Applicant’s inclusion of the word “Secret,” rather than the word “Formula,” in its
mark does not distinguish its MAUI ISLAND SECRET mark from Registrant’s MAUI
ISLAND FORMULA mark because consumers may mistakenly believe that MAUI
ISLAND SECRET is a variation of the MAUI ISLAND FORMULA line of products.
We find that Applicant’s mark MAUI ISLAND SECRET is similar to Registrant’s
MAUI ISLAND FORMULA marks in terms of appearance, sound, meaning and
commercial impression.

44 Id. at TSDR 17 and Applicant’s February 10, 2015 Response to an Office Action (TSDR 9).
Serial No. 86264786
- 20 -
D. Applicant’s prior use of its mark MAUI ISLAND SECRET is not material in
an ex parte appeal.

Applicant asserts that it “has used his mark longer, although the Examining
Attorney refused to note his earlier Registration 2,769,742 which was identified in
the original application.”45 However, priority is not an issue in an ex parte appeal. In
re Mohawk Air Servs. Inc., 196 USPQ 851, 854 (TTAB 1977); see also In re Calgon
Corporation, 435 F.2d 596, 168 USPQ 278, 280 (CCPA, 1971). As noted above, because
Applicant’s prior registration was cancelled, it has no probative value other than to
show that it once issued and it is not entitled to any of the statutory presumptions of
Section 7(b) of the Trademark Act.
E. The nature and extent of any confusion.
Applicant contends that because the two marks have been used in commerce for
more than 14 years without any reported instances of confusion, there is no likelihood
of confusion.46 The Federal Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of appellant's corporate president's
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual

45 Applicant’s Reply Brief, p. 4 (13 TTABVUE 5).
46 Applicant’s Brief, p. 4 (8 TTABVUE 5).
Serial No. 86264786
- 21 -
confusion carries little weight, [citation omitted], especially
in an ex parte context.
Majestic Distilling, 65 USPQ2d at 1205.
Accordingly, while examples of actual confusion may weigh in favor of a finding of
a likelihood of confusion, Applicant’s ex parte assertion that there has been no
confusion is not compelling in support of a finding of no likelihood of confusion. Thus,
we cannot conclude from the lack of instances of actual confusion that confusion is
not likely to occur.
F. Analyzing the factors.
Because the marks are similar, the goods are in part identical and, therefore, we
must presume that they move in the same channels of trade and are sold to the same
classes of consumers, Applicant’s mark MAUI ISLAND SECRET (standard
characters) for “sun tan cremes, lotions, oils and gels, sun browning creme and oil,
after sun suntan sealing lotion and non-medicated gel for the treatment and relief of
sunburns, sold in retail stores of others” is likely to cause confusion with the
registered marks MAUI ISLAND FORMULA (standard characters) and MAUI
ISLAND FORMULA (stylized) for “non-medicated skin and hair care preparations.”
III. Specimen
With its application, Applicant submitted two specimens, shown below, to support
the use of its mark. Applicant described the specimens as follows: “Bottle with label
(specimen 1); Label (specimen 2).
Serial No. 86264786
- 22 -

The Examining Attorney contends that “Specimen 1” is not acceptable because it
does not show Applicant’s mark used in connection with sun care products. With
respect to “Specimen 2,” the Examining Attorney asserts that the specimen is a
business card, rather than a label.
The second specimen submitted by Applicant is a business
card bearing the mark, with an individual’s name, address
and contact information, and two website addresses.
Business cards are considered to be advertising materials,
which are generally not acceptable specimens to show use
in commerce for goods.47
Accordingly, the Examining Attorney refused to register Applicant’s mark because
Applicant failed to submit an acceptable specimen of use in accordance with Section

47 Trademark Examining Attorney’s Brief (10 TTABVUE 20-21). The Examining Attorney
first raised the specimen issue in her August 28, 2015 Office Action after Applicant amended
its description of goods by deleting body lotions and leaving only sun care products and,
therefore, “Specimen 1” no longer supported use of Applicant’s mark in connection with
products listed in the description of goods. In the August 28, 2015 Office Action, the
Examining referred only to “Specimen 1.” She made no reference to “Specimen 2.” Likewise,
in the August 8, 2016 Office Action, the Examining Attorney referred only to “Specimen 1.”
She made no reference to “Specimen 2.” Applicant’s only acknowledgement of the specimen
refusal was a passing comment in its Reply Brief that barely addressed the issue.
Serial No. 86264786
- 23 -
1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1) (“The owner of a trademark used
in commerce may request registration of its trademark … by … filing … an
application and a verified statement … and such number of specimens or facsimiles
of the mark as may be required by the Director.”).
Applicant stated under oath that “Specimen 2” is a label. The Examining Attorney
has not submitted any evidence contradicting Applicant’s verified statement. Nor did
the Examining Attorney follow the procedure set forth in TMEP § 904.03(a) to
question labels or tags “whose appearance suggests they are not in actual use in
commerce,” whereby “the examining attorney may, under 37 C.F.R. § 2.61(b), inquire
as to how the specimen is used in order to properly examine the application.” The
Examining Attorney did not take the position during prosecution or in her brief that
“Specimen 2” would not be acceptable as a label for the goods (versus as a business
card). Given Applicant’s uncontradicted representation that “Specimen 2” is a label,
we find it acceptable.
In view thereof, the refusal to register Applicant’s mark on the ground that
Applicant failed to submit an acceptable specimen of use is reversed.
Decision: The refusal to register Applicant’s mark on the ground that Applicant
failed to submit an acceptable specimen is reversed.
The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act
is affirmed.