Mana Products, Inc.

Trademark Trial and Appeal Board

Nov 20, 2002

No. 75859262 (T.T.A.B. Nov. 20, 2002)

Mailed: 20 NOV 2002
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mana Products, Inc.
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Serial No. 75/859,262
_______
A. Thomas Kammer of Hoffman & Baron, LLP for Mana Products,
Inc.
Laura Gorman Kovalsky, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Seeherman, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Mana Products, Inc. (applicant) filed an application
under the intent to use provision of the Trademark Act to
register on the Principal Register the mark COLOR THERAPY
(in typed form) for goods ultimately identified as
“cosmetics, namely eye shadow, eye liner, mascara, eye
pencils, blush, lipstick, lip gloss, nail polish, makeup,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/859,262
2
face powder, skin foundation, and concealer used on the
skin” in International Class 3.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the registration of the
mark ESSENTIAL COLOR THERAPY (in typed form) for “hair
treatment preparations, namely shampoo for color treated
hair” in International Class 3.2
The examining attorney argues that the marks both
encompass the same words “color therapy” and that the word
“essential” in applicant’s mark “serves merely as an
adjective here and does not sufficiently alter the overall
commercial impression of the marks.” Br. at 4. In
addition, the examining attorney submitted twenty third-
party registrations to show that a single mark is
registered for both shampoo and various cosmetic products.
The examining attorney also submitted Internet printouts to
show that applicant’s and registrant’s goods have similar
trade channels. Because of the relatedness of the goods
and the similarities of the marks, the examining attorney
concluded that there would be a likelihood of confusion.
1 Serial No. 75/859,262 filed November 29, 1999.
2 Registration No. 1,965,226 issued April 2, 1996. Section 8 and
15 affidavits have been accepted and acknowledged, respectively.
Ser No. 75/859,262
3
Applicant submits that the examining attorney’s
evidence shows that registrant’s shampoo and applicant’s
cosmetics fall “under the very broad classification ‘health
and beauty aids.’” Reply Br. at 2.3 As for the marks,
applicant argues (Br. at 4) that:
[T]he commercial impression of ESSENTIAL COLOR
THERAPY, as used in connection with shampoo for color-
treated hair, is that of an essential and specialized
product for such hair… In contrast, the mark COLOR
THERAPY as used on color cosmetic products is
suggestive of imparting color to the skin, as such
cosmetics are known to do.
After the examining attorney made the refusal final,
this appeal followed. Both applicant and the examining
attorney filed briefs.
We reverse.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1361, 177 USPQ 563, 567 (CCPA 1973). In considering
the evidence of record on these factors, we must keep in
mind that “[t]he fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
3 Applicant’s evidence submitted with its Appeal Brief is
untimely and it will not be considered. 37 CFR § 2.142(d).
Ser No. 75/859,262
4
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We start by addressing the issue of whether the marks
are similar in sound, appearance, or meaning such that they
create similar overall commercial impressions. “When it is
the entirety of the marks that is perceived by the public,
it is the entirety of the marks that must be compared.”
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ 1471, 1473 (Fed. Cir. 1992). However,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of the mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). We are also cognizant of
the requirement not to ignore elements in marks in order to
find that there is a likelihood of confusion. In re Hearst
Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992).
Clearly, both applicant’s and registrant’s marks
contain the same words “Color Therapy” in typed form. The
only difference between applicant’s mark and registrant’s
mark is the fact that applicant’s mark does not include the
word “Essential.” However, when we compare the marks, we
cannot dismiss the absence of the term “essential” from
Ser No. 75/859,262
5
applicant’s mark as merely an adjective that does not alter
the commercial impression. First, the word “color,” which
appears in both marks, is at the very least highly
suggestive when applied to “shampoo for color-treated hair”
and cosmetics that apply color, such as lipstick and nail
polish. Next, we note that the term “therapy” is defined
as “healing power or quality.”4 Thus, the term “therapy”
for a hair treatment preparation for color-treated hair has
a suggestive connotation. Indeed, “color therapy” suggests
a shampoo that has some healing quality or property for
hair that has been damaged by coloring. Thus, it would not
dominate the registered mark such that the other word in
the mark would be considered subordinate matter. While
“essential” may also have some suggestive or laudatory
connotations, the term still has significance in the
registrant’s mark and in the comparison between applicant’s
and registrant’s marks. In particular, it is the first
word of the cited mark, and as such is noticeable in terms
of appearance and pronunciation.
Applicant, on the other hand, intends to use the mark
COLOR THERAPY alone on products distinct from shampoo for
4 Webster’s II New Riverside University Dictionary (1984). We
take judicial notice of this dictionary definition. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Ser No. 75/859,262
6
color-treated hair. Registrant’s identification of goods
makes the connection between registrant’s mark and goods
more apparent, i.e., registrant’s shampoo suggests a hair
treatment that has some healing power or quality for color-
treated hair. On the other hand, applicant’s COLOR THERAPY
mark suggests that the make-up products bring the correct
color to the wearer’s face or helps the wearer’s looks
through the use of color. Therefore, the marks would have
different suggestive meanings to prospective purchasers,
i.e., healing color damaged hair versus selecting the best
color make up. Thus, the overall commercial impressions of
the marks are different. See Champagne Louis Roederer S.A.
v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460
(Fed. Cir. 1998) (“CRISTAL and CRYSTAL CREEK evoke very
different images in the minds of relevant consumers”).
Inasmuch as there are differences in sound,
appearance, and meaning between the marks and the
commercial impressions of the mark would be different, we
find that, when the marks are considered in their
entireties, their differences outweigh their similarities.
Next, we compare the goods of applicant and the
registrant. Here again, there are differences.
Registrant’s goods are limited to hair treatment products,
namely shampoo for color-treated hair. We must determine
Ser No. 75/859,262
7
the question of likelihood of confusion based on the
identification of the goods in the application and the
registration. In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973).
While the examining attorney has submitted some
evidence in the form of registrations to show that a single
mark is sometimes used on the same general goods as those
in the cited registration and the application, this
evidence is not conclusive. Although there is some
relationship between the goods of applicant and registrant,
the relationship is not so close that these marks with
different commercial impression could not co-exist without
a likelihood of confusion. See, e.g., Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines”). There are significant differences
between a shampoo for color-treated hair and applicant’s
various cosmetic products. While there is some evidence
Ser No. 75/859,262
8
that shampoo and cosmetics are sold on the same Internet
site in the health and beauty section or personal care
section, this does not prove that potential purchasers
would expect that these products would come from the same
source if they were sold under similar marks. The fact
that the Target® website lists “Dental, Grooming, Haircare,
Massage, Water/Air Purification, Cosmetics and Fragrances”
links on the same page does not mean that all these goods
are related. Similarly, it is not especially significant
that other websites identify such general categories of
goods as “Bath Basics, Body Cleansers, Body Moisturizers,
Body Treatments, Hair Care, Sun, Mother & Baby, and Bath &
Body Sets” and specifically sell shampoo and makeup. It is
not unusual for a large store or a website to sell a
variety of different products. This evidence, by itself,
does not demonstrate that the goods sold on these websites
and in these stores would be expected to come from the same
source.
Given the differences in the marks and the suggestive
nature of the common term COLOR THERAPY, which results in
the cited registration being entitled to a limited scope of
protection for that term, we conclude that there is no
likelihood of confusion.
Ser No. 75/859,262
9
Decision: The refusal to register is reversed.