Pili Naturals USA Corp.

Trademark Trial and Appeal Board

Jul 1, 2021

87517538 (T.T.A.B. Jul. 1, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: July 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Pili Naturals USA Corp.
_____

Serial No. 87517538
_____

Keala Chan, of Chan Hubbard PLLC, for
Pili Naturals USA Corp.

Mark S. Tratos, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Goodman, Heasley, and Johnson,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
I. Background
A. The Application

Applicant, Pili Naturals USA Corp., seeks registration on the Principal Register
of the composite mark (with “PILI” disclaimed) for “Anti-aging creams;
Anti-wrinkle creams; Beauty creams; Beauty serums; Cosmetic creams; Cosmetic
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oils; Facial oils; Moisturizing creams; Moisturizing milks; Moisturizing preparations
for the skin; Anti-aging moisturizer; Anti-aging moisturizers used as cosmetics; Skin
moisturizer; Skin moisturizers used as cosmetics; all of the aforesaid goods
containing Pili oil” in International Class 3 (emphasis added).1
During the course of prosecution, Applicant disclaimed “PILI” and added “all of
the aforesaid goods containing Pili oil” to its identification because all of its identified
skincare products contain pili oil, an ingredient derived from the fruit or nut of the
Pili tree, grown in the Philippines.2 The Trademark Examining Attorney then
suspended action on the subject Application for two and a half years pending
prosecution of another application, filed earlier, for , mainly for skincare
products.3

1 Application Serial No. 87517538 was filed on July 6, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere as of
May 31, 2017, and use in commerce since at least as early as June 30, 2017. The Application
contains the following translation statement: “The English translation of ‘ANI’ in the mark
is “HARVEST.’” The Application also contains the following description of the mark: “The
mark consists of the stylized words ‘PILI ANI’ in which the wording ‘PILI’ is over the wording
‘ANI’; above the wording is an image of a stylized plant in a shaded oval shape.” Color is not
claimed as a feature of the mark.

The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to the
docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.

2 See Examining Attorney’s Oct. 10, 2017 amendment. See generally Exhibits A through C to
Applicant’s September 4, 2020 Response to Office Action (printouts from Applicant’s website,
PiliAniUSA.com) at TSDR 29-37.
3 Oct. 30, 2017 suspension letter pending disposition of App. Ser. No. 87404726, filed earlier,
on April 10, 2017.
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B. The Earlier-filed application Matures Into the
Cited Registration

The suspension lasted two and a half years because the earlier-filed application
for encountered its own hurdles. During the course of its prosecution, it
transpired that none of the products bearing that mark contained pili oil.4 The
examining attorney in that case consequently refused registration on the ground that
the mark was deceptive, leading consumers to purchase skincare products in the
erroneous belief that they contained pili oil. 15 U.S.C. § 1052(a). That refusal was
appealed to the Board, which found the evidence of record insufficient to show
deceptiveness under Section 2(a). Specifically, the evidence failed to show that
consumers in the United States were familiar with pili oil as a skincare ingredient,
that those consumers would believe the skincare products contained pili oil, or that
the presence of pili oil would be material to their purchasing decisions. The Board
thus reversed the refusal of the earlier-filed application, allowing it to proceed to
registration.5
Ultimately, when the earlier-filed application matured into a Registration, the
Examining Attorney refused registration of Applicant’s mark under Section

4 Registrant’s response to Request for Information: “Applicant states that its goods do not
contain pili oil.” Applicant’s Sept. 4, 2020 Response to Office Action at 40.
5 In re Farmacia Drogueria San Jorge Ltda – Drogueria San Jorge, No. 87404726 (TTAB
Sept. 19, 2019), Applicant’s Sept. 4, 2020 Response to Office Action at 153-163.
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2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of
confusion with the mark for, specifically, “Body and beauty care cosmetics;
Body oil; Body scrub; Hair lotions; Shampoo-conditioners; Cosmetic preparations for
body care; Face and body creams; Face and body lotions; Hair shampoo; Lotions for
face and body care; Non-medicated herbal body care products, namely, body oils; Skin
and body topical lotions, creams and oils for cosmetic use; Toning lotion, for the face,
body and hands” in International Class 3.6
When the refusal was made final, Applicant appealed. The appeal is fully briefed.
We affirm the refusal to register.
II. Likelihood of Confusion
Section 2(d) of the Trademark Act provides that a mark may be refused
registration if it “[c]onsists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause confusion, or to cause
mistake, or to deceive….” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion between the marks under
Section 2(d), we analyze the evidence and arguments under the DuPont factors. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)

6 Registration No. 6055880, issued on the Principal Register on May 19, 2020. The
registration contains the following description of the mark: “The mark consists of the word
‘pili’ in a special typeface with a characteristic element on the letters ‘I’ and a leaf at the end.”
Color is not claimed as a feature of the mark.
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(“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). We consider each DuPont factor for which there is
evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1161-62 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the
weight afforded to each factor depends on the circumstances.” Stratus Networks, Inc.
v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir.
2020). “In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.”
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited
in Ricardo Media v. Inventive Software, 2019 USPQ2d 311355 at *5 (TTAB 2019). In
this case, both of those factors, as well as the similar channels of trade, weigh in favor
of finding a likelihood of confusion.
A. Similarity of the Goods and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).
A proper comparison of the goods considers whether the consuming public may
perceive them as related enough to cause confusion about the source or origin. In re
St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) cited in In
re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). “The goods need only be
sufficiently related that consumers would be likely to assume, upon encountering the
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goods under similar marks, that the goods originate from, are sponsored or
authorized by, or are otherwise connected to the same source.” In re Davia, 110
USPQ2d 1810, 1815 (TTAB 2014) (citing Coach Services Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)).
Once again, the respective identified goods, in International Class 3, are:
Applicant Registrant
“Anti-aging creams; Anti-wrinkle
creams; Beauty creams; Beauty serums;
Cosmetic creams; Cosmetic oils; Facial
oils; Moisturizing creams; Moisturizing
milks; Moisturizing preparations for the
skin; Anti-aging moisturizer; Anti-aging
moisturizers used as cosmetics; Skin
moisturizer; Skin moisturizers used as
cosmetics; all of the aforesaid goods
containing Pili oil”
“Body and beauty care cosmetics; Body
oil; Body scrub; Hair lotions; Shampoo-
conditioners; Cosmetic preparations for
body care; Face and body creams; Face
and body lotions; Hair shampoo; Lotions
for face and body care; Non-medicated
herbal body care products, namely, body
oils; Skin and body topical lotions,
creams and oils for cosmetic use; Toning
lotion, for the face, body and hands”

We note initially that the respective skin care products are legally identical. Even
though Registrant denied using pili oil during prosecution of its application, its
resulting Registration contains no such limitation. Our decision must be based on the
identification of goods in the application and registration, Stone Lion Capital v. Lion
Capital, 110 USPQ2d at 1162, and “a registration that describes goods broadly is
presumed to encompass all goods or services of the type described.” In re Country
Oven, Inc., 2019 USPQ2d 443903, * 9 (TTAB 2019). Registrant’s broad identification
of skin care products encompasses products with or without pili oil. So it encompasses
Applicant’s narrowly identified products containing pili oil, and their products are
legally identical. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (cast iron and steel legally identical to carbon steel, alloy steel, semi-
steel, and malleable and grey iron castings); In re Hughes Furniture Indus., Inc., 114
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USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”).
The legal identity of Applicant’s and Registrant’s skin care products establishes
the relatedness of their Class 3 goods. See In re Aquamar, Inc., 115 USPQ2d 1122,
1126 n.5 (TTAB 2015) (“[I]t is sufficient for finding a likelihood of confusion if
relatedness is established for any item encompassed by the identification of goods
within a particular class in the application.”).
Additionally, though, the Examining Attorney shows that Applicant’s skin care
products and Registrant’s hair care products are related. Printouts from various
websites—such as The Body Shop,7 Neutrogena,8 Kiehl’s,9 True Botanicals,10
Aveeno,11 Philosophy,12 and Peter Thomas Roth13—show that the same entity
commonly provides skin care and hair care products of the types identified in the
application and cited registration under the same mark. This evidence supports a
finding that the skin care and hair care products “are closely related cosmetic and
toiletry products that are, as the record shows, generally sold through the same
outlets….” Revlon, Inc. v. La Maur, Inc., 157 USPQ 602, 605 (TTAB 1968).
The Examining Attorney adds sixteen third-party registrations showing that

7 TheBodyShop.com, July 1, 2020 Office Action at 8-13.
8 Neutrogena.com, July 1, 2020 Office Action at 21-26.
9 Kiehls.com, September 28, 2020 Office Action at 84-97.
10 TrueBotanicals.com, September 28, 2020 Office Action at 98-105.
11 Aveeno.com, September 28, 2020 Office Action at 117-129.
12 Philosophy.com, September 28, 2020 Office Action at 142-156.
13 PeterThomasRoth.com, September 28, 2020 Office Action at 157-170.
Serial No. 87517538
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Applicant’s and Registrant’s respective goods may emanate from a single source
under a single mark.14 For example:
Registration
No.
Mark Pertinent Goods
3573057 TRANSPARENT
CLINIC
Skin care lotions, creams and gels; facial and
body creams, lotions and gels; skin and facial
moisturizer; skin cleansing lotions, creams
and gels.
3402585 JORDAN
ESSENTIALS
Skin exfoliating lotions, skin or facial
moisturizing sprays,; skin cleansing lotion;
fair conditioners, skin cleansing cream, skin
cream, vanishing cream; hair gel; non-
medicated hair care preparations; hair
shampoo; skin cleansing gel, skin emollients.
3906102 ARIS
(and Design)
Hair care lotions; hair care preparations;
hair cleaning preparations; hair conditioners;
hair shampoo; beauty creams for body care;
body cream soap; body and beauty care
cosmetics; body lotions; body oils; face and
body creams; face and body lotions.
3528921 BEAUTY SOCIETY Beauty creams; beauty gels; beauty lotions;
body and beauty care cosmetics; cosmetic
creams for skin care; cosmetic preparations
for skin renewal; face and body creams; face
and body lotions; lotions for face and body
care; skin conditioners.
4672052 TIBI Cosmetic creams for skin care; cosmetic
preparations for body care; face and body
creams; face and body lotions; hair care
preparations; hair cleaning preparations;
hair shampoos and conditioners; lotions for
face and body care; non-medicated skin care
preparations.
4649716

WHOLEFACE
HAPPINESS
Beauty creams for body care; cosmetic
creams for skin care; cosmetic nourishing
creams; face and body creams; Hair care
creams; non-medicated skin care creams and
lotions; skin creams.
Such third-party registrations may serve to suggest that Applicant’s and
Registrant’s goods are of a type that may emanate from a single source. See Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.

14 Sept. 28, 2020 Office Action at 12-61.
Serial No. 87517538
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2002) (evidence that “a single company sells the goods and services of both parties, if
presented, is relevant to a relatedness analysis”); DeVivo v. Ortiz, 2020 USPQ2d
10153, *13 (TTAB 2020).
Because Applicant’s and Registrant’s goods are identical in part and otherwise
related, they are presumed to travel in the same channels of trade to the same classes
of customers—ordinary consumers of cosmetic and toiletry products. See In re Yawata
Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where the goods are
legally identical, the channels of trade and classes of purchasers are considered to be
the same); In re Solid State Design Inc., 125 USPQ2d 1409, 1414 (TTAB 2018).
Applicant does not dispute the similarity of the goods or the channels of trade. We
find accordingly that the second and third DuPont factors favor a finding of likelihood
of confusion.
B. Similarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746
(TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110
USPQ2d at 1812).
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Once again, Applicant’s mark is and Registrant’s mark is .
As the Examining Attorney correctly notes, Applicant adopts the entire literal
wording of Registrant’s mark, PILI, and places it prominently as the first word in its
own mark, where it is “most likely to be impressed in the mind of a purchaser and
remembered.” Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988), quoted in TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115-16
(TTAB 2019). While there is no explicit rule that the marks are automatically similar
because one contains the other, “[l]ikelihood of confusion often has been found where
the entirety of one mark is incorporated within another.” Hunter Indus., Inc. v. Toro
Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (Opposer’s mark PRECISION
DISTRIBUTION CONTROL contains the entirety of Applicant’s mark PRECISION).
quoted in Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, *6-
7 (TTAB 2019) (ROAD WARRIOR contains WARRIOR).
While we do not discount the effect of ANI in Applicant’s mark, it is insufficient to
overcome the strong similarity engendered by the identical and dominant word PILI.
See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 n. 3 (Fed. Cir.
2018) (accepting Board’s finding that identical wording at the beginning of the marks
“lessens the possible influence of differing wording at the end.”). “Thus, if the
dominant portion of both marks is the same, then confusion may be likely
Serial No. 87517538
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notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB
1985).
The strong literal similarity in the marks’ wording dominates any minor
differences in their stylization or design. “[T]he verbal portion of a word and design
mark likely will be the dominant portion. … This makes sense given that the literal
component of brand names likely will appear alone when used in text and will be
spoken when requested by consumers.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1911 (Fed. Cir. 2012) cited in In re Information Builders Inc., 2020 USPQ2d
10444, *7 (TTAB 2020). The design elements do not serve as points of distinction, as
both marks have leaf designs. And the respective type fonts in which the words are
displayed are not so distinctive or different as to denote different sources.
Applicant focuses on the marks’ commercial impressions. It argues that its mark
is descriptive or suggestive of its principal ingredient: pili oil, from the pili tree native
to the Philippines, whereas Registrant’s mark is arbitrary. Applicant elaborates:
Applicant does not dispute that its mark projects a suggestive commercial
impression of Pili nut oil. …
What Applicant strongly disputes, however, is that the Cited Mark has the
same commercial impression. The Examining Attorney’s evidence simply
does not support that the commercial impression of the Cited Mark is Pili
oil.15
Applicant cites the prosecution history of the cited mark, and the
Board’s 2019 decision finding that “the record does not show that the relevant U.S.

15 Applicant’s brief, 4 TTABVUE 5.
Serial No. 87517538
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consumer generally would be familiar with pili as an ingredient in such goods.”16 In
that meticulous and detailed opinion, the Board found that most of the evidence of
pili-based skincare products comes from foreign websites, primarily from the
Philippines,” and that “statements on many of the websites actually corroborate the
obscurity of pili as a skincare ingredient.”17 Indeed, as Applicant notes, “many of
these online articles and blogs are actually marketing materials and product
placements about Applicant’s PILI ANI goods, in which Applicant seeks to educate
the public about Pili oil.”18
Applicant agrees that “PILI” is an obscure term in the United States, and that it
must educate U.S. consumers as to its meaning:
Applicant is not aware of any newly arisen evidence would support that
consumers are more aware of skincare products with Pili oil since the
Board’s 2019 opinion.19

Recognizing this, Applicant sought to build a market for Pili oil in the US,
launching its luxury cosmetics products containing Pili oil in mid-2017. In
addition to Applicant’s product packaging, descriptions and web pages,
which emphasized that all of its products contain Pili oil, Applicant’s
marketing included placement of blogs and articles to educate the public
on the benefits of Pili oil.20

… Applicant must educate the consumer about the existence and benefit of
Pili oil, not take it at face value that the consuming public is aware of this
ingredient.21

16 Applicant’s brief, 4 TTABVUE 4 (quoting In re Farmacia Drogueria San Jorge Ltda –
Drogueria San Jorge, No. 87404726 (TTAB Sept. 19, 2019), Applicant’s Sept. 4, 2020
Response to Office Action at 158).
17 In re Farmacia Drogueria San Jorge Ltda – Drogueria San Jorge, No. 87404726 (TTAB
Sept. 19, 2019), Applicant’s Sept. 4, 2020 Response to Office Action at 159-60).
18 Applicant’s brief, 4 TTABVUE 5.
19 Applicant’s brief, 4 TTABVUE 8.
20 Applicant’s brief, 4 TTABVUE 3.
21 Applicant’s brief, 4 TTABVUE 12-13.
Serial No. 87517538
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Applicant thus maintains that its mark, suggesting or describing its principal
ingredient of pili oil, conveys a wholly different commercial impression from
Registrant’s mark: “In this case, we have PILI as an arbitrary word vs. PILI ANI
suggestive of the Pili harvest.”22
Applicant’s and Registrant’s trade dress reflects this difference, it argues.
Registrant’s products appear “in a lowercase, naturalistic font (with the word
‘natural’ appearing in lowercase, small font below the second half of the word) evoking
an arbitrary, naturistic impression. The labels also feature the name and image of
the key ingredient in each product.”23 For example:

24

22 Applicant’s brief, 4 TTABVUE 14.
23 Applicant’s brief, 4 TTABVUE 9.
24 Applicant’s brief, 4 TTABVUE 10, Sept. 4, 2020 Response to Office Action at 59.
Serial No. 87517538
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By contrast, Applicant argues, “Applicant’s specimen and materials show that
‘WITH PILI AND ELEMI OIL’ or ‘MADE WITH PURE PILI OIL’ is printed on every
label, thereby linking the word PILI in Applicant’s mark with the inclusion of Pili oil
in the product’s ingredients.”
25
As evidenced by this trade dress, Applicant concludes, the marks’ shared word,
“PILI,” though literally identical, conveys differing commercial impressions for the
differing goods. It cites a trio of decisions in support of this position: In re Sears,
Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras
and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the
term ‘CROSS-OVER’ was suggestive of the construction of applicant’s bras, whereas
‘CROSSOVER,’ as applied to registrant’s goods, was “likely to be perceived by
purchasers either as an entirely arbitrary designation, or as being suggestive of
sportswear which ‘crosses over’ the line between informal and more formal wear . . .
or the line between two seasons”); In re British Bulldog, Ltd., 224 USPQ 854, 856
(TTAB 1984) (holding PLAYERS for men’s underwear and PLAYERS for shoes not
likely to cause confusion, agreeing with applicant's argument that the term

25 Applicant’s brief, 4 TTABVUE 11, Sept. 4, 2020 Response to Office Action at 29, 31.
Serial No. 87517538
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‘PLAYERS’ implies a fit, style, color, and durability suitable for outdoor activities
when applied to shoes, but “implies something else, primarily indoors in nature”
when applied to men’s underwear); In re Sydel Lingerie Co., 197 USPQ 629, 630
(TTAB 1977) (holding BOTTOMS UP for ladies’ and children’s underwear and
BOTTOMS UP for men’s clothing not likely to cause confusion, noting that the
wording connotes the drinking phrase ‘Drink Up’ when applied to men’s clothing, but
does not have this connotation when applied to ladies’ and children’s underwear).26
We find Applicant’s argument unavailing. Where, as here, marks are used on
legally identical goods, the degree of similarity between the marks necessary to
support a determination that confusion is likely declines. Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (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.”) quoted in
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). As
noted, Registrant’s identification of goods is broad enough to encompass skincare
goods containing pili oil.
What’s more, the consuming public does not scrutinize marks. Information
Builders Inc., 2020 USPQ2d 10444, at *6 (“However, in the normal environment of
the marketplace where purchases are actually made, purchasers and prospective
purchasers would not usually have the opportunity for a careful examination of these
marks in minute detail….”). “The marks ‘must be considered … in light of the
fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In re St.

26 Applicant’s brief, 4 TTABVUE 13-14.
Serial No. 87517538
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Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). The proper
focus is on the recollection of the average consumer, who retains a general rather
than specific impression of the marks. In re FabFitFun, 127 USPQ2d at 1675.
The classes of consumers of Applicant’s and Registrant’s products—ordinary
consumers of cosmetic and toiletry products—cannot be expected to draw the fine
distinctions that Applicant expects. As the Examining Attorney cogently points out,
the classes of consumers may reasonably be expected to fall into two groups: those
who are unfamiliar with pili oil (the larger group in the United States) and those who
are familiar with pili oil (the smaller group). The Examining Attorney observes:
If the consumer is familiar with the Pili nut or Pili oil, then the wording
“PILI” would connote the Pili nut or Pili oil and would create a commercial
impression the Applicant’s and Registrant’s goods have something to do
with the Pili nut or Pili oil. Alternatively, if a consumer were not familiar
with a Pili nut or Pili oil, then the wording “PILI” would create a
commercial impression of an arbitrary or coined word. A consumer’s
knowledge of the Pili nut or Pili oil, and its uses, will directly affect the
commercial impression created by the wording in the marks. In either case,
the commercial impression of the wording “PILI” is the same.27

We agree. If, as Applicant acknowledges, “PILI” is an obscure term, unfamiliar to
most consumers in the United States, then it creates the same arbitrary commercial
impression in both marks. If, on the other hand, Applicant succeeds in “educating”
consumers about pili oil, then “PILI” would convey the same connotation and
commercial impression in both marks. Applicant’s trio of cited cases—e.g., In re Sears,
Roebuck, 2 USPQ2d at 1314 (CROSS-OVER versus CROSSOVER)—is thus

27 Examining Attorney’s brief, 6 TTABVUE 10.
Serial No. 87517538
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distinguishable, for in those cases, consumers would perceive differing connotations
in connection with different goods; here they would not.
Applicant’s addition of the suffix “ANI,” translated as “harvest,” would not change
this impression. If consumers are unfamiliar with the Philippine Tagalog word
“PILI,” they would be even less familiar with “ANI.” And if Applicant succeeds in
educating U.S. consumers that PILI ANI means “pili harvest,” that would simply
direct their focus back to the dominant, shared word PILI.28 As noted, the identical
“PILI” wording at the beginning of Applicant’s mark “lessens the possible influence
of differing wording at the end.” In re Detroit Athletic, 128 USPQ2d at 1049 n. 3.
The differing trade dress does not avert the marks’ similarity. The samples shown
above would have to be examined with the utmost scrutiny to discern their
differences; yet as we have seen, the purchasing public cannot be expected to
scrutinize such details. See In re Information Builders Inc., 2020 USPQ2d 10444, at
*6. And as those samples demonstrate, trade dress “may be changed at any time.”
Miles Labs. Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1452 (TTAB
1986). Registrant changes its display of its mark, sometimes displaying it
alone, other times with the word “natural.” Its optional addition of “natural” does not
dispel its similarity with Applicant’s mark. The Examining Attorney rightly notes, “if
a consumer is familiar with Pili oil, perhaps from encountering the Applicant’s goods,
the wording ‘natural’ on the Registrant’s packaging will likely reinforce the same or
similar commercial impression created by the wording ‘PILI’ in the Applicant’s

28 See Examining Attorney’s brief, 6 TTABVUE 8.
Serial No. 87517538
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mark.”29 As the Board has observed, “we do not consider how Applicant and
Registrant actually use their marks in the marketplace, but rather how they appear
in the registration and the application. We must compare the marks as they appear
in the drawings, and not on any labels that may have additional wording or
information.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018).
In sum, the issue is the marks, and they are similar.
For these reasons, the first DuPont factor weighs in favor of finding a likelihood
of confusion.
III. Conclusion

Because the marks, goods, and channels of trade are all similar, we find that
Applicant’s mark is likely to cause confusion with the cited registered mark under
Section 2(d). 15 U.S.C. § 1052(d).
Decision: The refusal to register Applicant’s mark is affirmed.

29 Examining Attorney’s brief, 6 TTABVUE 12-13.