Mysteek Naturals, LLC

Trademark Trial and Appeal Board

Oct 22, 2020

87925530RE (T.T.A.B. Oct. 22, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: October 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mysteek Naturals, LLC
_____

Serial No. 87925530
_____

Jasmine C. Jandrlich and Rosezena J. Pierce of R.J. Pierce Law Group, P.C.,
for Mysteek Naturals, LLC.
Mark S. Tratos, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Taylor, Wellington and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
On Request for Reconsideration

On July 30, 2020, the Board issued a decision affirming the Examining Attorney’s
Section 2(d) refusal of registration. On August 31, 2020, Applicant filed a request for
reconsideration under Trademark Rule 2.144, 37 C.F.R. § 2.144.
In its request for reconsideration, Applicant argues that the Board erred by not
finding COLOURPOP as a whole conceptually and commercially weak. 17 TTABVUE
6-7. Applicant points to the Board’s findings regarding its submitted third-party POP-
Serial No. 87925530
- 2 -
formative registrations, and asserts that the Board erred by not considering some of
the submitted registrations. 17 TTABVUE 7.
Applicant submitted 32 POP-formative registrations. We found 18 used-based
registrations most probative1 and did not consider nine registrations that were based
on Section 44(e) or Section 66(a) of the Trademark Act. Applicant argues that it was
error not to consider the nine foreign registrations in analyzing the conceptual
weakness of the term “pop.” 17 TTABVUE 7.
Registrations based on Section 66(a) or Section 44(e) of the Trademark Act, and
with no Section 71 or Section 8 affidavit having been filed, have less probative value
as to the meaning of a term to United States consumers even when used similar to a
dictionary. However, even if we consider most of these foreign registrations for this
purpose2, (Reg. No. 5405302), BLUSH POP (Reg. No. 5061404), DIGITAL
POP (Reg. No. 5483399), FLOWER POP and FRESH POP (Reg. Nos. 5757789 and
5603852, owned by same entity), COSTUME NATIONAL POP COLLECTION (Reg.
No. 4137420) and POP DELIGHTS (Reg. No. 5244730)3, they do not compel a
different result.

1 One registrant owns two additional POP-formative registrations which are redundant for
the purpose of showing use by different third-parties of the term in connection with cosmetic
goods; three registrations identified goods (candy, cosmetic adhesives, beauty cases) for which
no evidence of relatedness was provided.
2 Two of the listed registrations are owned by the same entity. One of the registrations
identifies goods for which no evidence of relatedness was provided, and one of the
registrations indicates that the relevant Class 3 goods (e.g., lipstick, lip gloss) covered by the
registration have been cancelled.
3 October 4, 2019 Response to Office Action at TSDR 16, 18, 32, 40, 42, 70, 72.
Serial No. 87925530
- 3 -
These registrations reinforce our finding that “pop” is a highly suggestive term
used in connection with cosmetic goods. However, these additional registrations also
evoke a different commercial impression than Registrant’s COLOURPOP mark
because they do not contain the term “color/colour.” Moreover, these other marks
contain other terms in addition to the term “pop,” creating very different overall
commercial impressions from COLOURPOP. Therefore, these additional third-party
registrations also do not support a finding of conceptual weakness as to Registrant’s
COLOURPOP mark as a whole. See In re Merck & Co., Inc. 189 USPQ 355, 356 (TTAB
1975) (third-party registrations showing frequent adoption of the letter “M” as a
portion of composite mark do not establish that registrant’s mark M-VAC as a whole
is weak and entitled to limited protection).
Applicant also argues that the Board erred in not finding “pop” commercially
weak. Applicant submits that the use-based third-party registrations of POP-
formative marks support a finding that the term is commercially weak because “in
each case, the registrant of the POP-formative marks submitted a specimen showing
the marks used in commerce, i.e. actual use.” 17 TTABVUE 6.
However, use-based third-party registrations have little probative value because
they are not evidence that the marks are in use on a commercial scale or that the
public has become familiar with them. 4 See Smith Bros. Mfg. Co. v. Stone Mfg. Co.,

4 The specimens of the use-based third-party registrations are not in the record, and the
Board does not take judicial notice of them. In re Clausen Co., 222 USPQ 455, 456 n.2 (TTAB
1984). But in any event, the specimens found in the third-party registration files are not
evidence that the marks are currently in use.

Serial No. 87925530
- 4 -
476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware
of registrations reposing in the U.S. Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). As our primary reviewing court
stated in Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992):
“Under DuPont, ‘[t]he number and nature of similar marks
in use on similar goods’ is a factor that must be considered
in determining likelihood of confusion. 476 F.2d at 1361,
177 USPQ at 567 (factor 6). Much of the undisputed record
evidence relates to third party registrations, which
admittedly are given little weight but which nevertheless
are relevant when evaluating likelihood of confusion. As to
strength of a mark, however, registration evidence may not
be given any weight. AMF Inc. v. American Leisure Prods.,
Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973)
(‘The existence of [third party] registrations is not evidence
of what happens in the market place or that customers are
familiar with them. …’) (emphasis in original).”
Therefore, it was not error to give no weight to the use-based third-party POP-
formative registration evidence when considering the commercial strength of
Registrant’s COLOURPOP mark.
Applicant also argues that the Board’s finding that COLOURPOP is not weak,
diluted or entitled only to a narrow scope of protection is not reflective of the evidence
in the record that shows weakness of the separate terms “colour/color” and “pop.” 5

5 In addition to appearing to be improper re-argument on reconsideration, Applicant’s
argument at 17 TTABVUE 7-9 that Registrant’s mark is descriptive constitutes and improper
collateral attack on the cited registration, and will not be considered. In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (during an ex parte appeal, an
applicant will not be heard on matters that constitute a collateral attack on the cited
registration).
Serial No. 87925530
- 5 -
However, it is well-established that the weakness of the individual components of
a mark is not, of itself, sufficient to prove that their combination creates a weak mark.
See e.g., Libby McNeil & Libby v. Carthage Creamery Co., 144 USPQ 690 (TTAB 1965)
(even though evidence showed “sunny” and “vale” were somewhat weak in connection
with food products, opposer’s registered mark SUNNY-VALE was arbitrary as used
in connection with food products, as no third parties had registered the term).
Therefore, we find no error in our finding that COLOURPOP is not entitled to a
narrow scope of protection. As we stated in the final decision, there is no evidence in
the record that COLOURPOP is commonly used in connection with any of the
Registrant’s goods or that the combination has a normally understood and well-
recognized descriptive or suggestive meaning in the field of makeup or cosmetics. We
add that even if COLOURPOP is considered highly suggestive and hence weak, “weak
marks are entitled to protection against registration of similar marks, especially
identical ones, for related goods and services.” In re Colonial Stores, 216 USPQ 793,
795 (TTAB 1982).
Lastly, Applicant makes additional arguments that COLOURPOP as a whole is
conceptually weak. These are essentially similar to arguments previously made on
appeal. These arguments were considered by the Board as reflected in our final
decision and are improperly made on reconsideration.
The bases for the Board’s decision have been carefully reviewed in light of
Applicant’s Request for Reconsideration. We do not find any error in the Board’s
Serial No. 87925530
- 6 -
determination affirming the refusal to register the subject mark based on a likelihood
of confusion with the cited mark.
In view of the foregoing, Applicant’s Request for Reconsideration of the Board’s
Decision is DENIED.