Cargo Cosmetics Corp.

Trademark Trial and Appeal Board

Sep 22, 2008

No. 77002927 (T.T.A.B. Sep. 22, 2008)

Hearing: August 14, 2008 Mailed: September 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cargo Cosmetics Corp.
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Serial No. 77002927
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Donald L. Dennison of Dennison, Schultz, & Macdonald for Cargo
Cosmetics Corp.

Barbara A. Gold, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Holtzman, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Cargo Cosmetics Corp.
(applicant) to register the mark PURSEGLOSS, in standard
character form, for goods ultimately identified as "lipstick, lip
gloss, and lip balm" in Class 3.1

1 Application Serial No. 77002927 was filed on September 20, 2006,
based on an allegation of a bona fide intention to use the mark in
commerce.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77002927
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark PURSE POWDER ("Powder" disclaimed) in
standard characters for "cosmetic face powder" in Class 3, as to
be likely to cause confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was held.
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 likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a comparison of applicant's goods,
lipstick, lip gloss and lip balm, with registrant's goods,
cosmetic face powder. Applicant states, in its brief (p. 4),
that it "does not contest the fact that the goods of the parties
are similar and would move in the same trade channels."

2 Registration No. 2926383, issued February 15, 2005.
Serial No. 77002927
3
Indeed, we find that the goods, by their nature, are closely
related cosmetic products that would be sold in the same channels
of trade to the same classes of purchasers, including ordinary
consumers. In addition, the examining attorney has submitted a
number of third-party registrations showing, in each instance,
that the same mark has been registered for both applicant's and
registrant's products. These third-party registrations, while
not evidence of use of the marks therein, tend to show that
purchasers would expect the types of products offered by
applicant and registrant, if sold under similar marks, to emanate
from the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co., 6
USPQ2d 1467 (TTAB 1988).
We turn then to a comparison of applicant's mark PURSEGLOSS
and registrant's mark PURSE POWDER in their entireties in terms
of sound, appearance, meaning and commercial impression. See du
Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
In comparing the marks we must consider that the test under
this du Pont factor is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impressions that confusion as to the source of the
goods offered under the respective marks is likely to result.
Serial No. 77002927
4
The focus is on the recollection of the average purchaser, who
normally retains a general, rather than a specific, impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
In addition, while marks must be compared in their
entireties, "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable." In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applying the above principles in this case, when we compare
applicant's mark PURSEGLOSS and registrant's mark PURSE POWDER
in their entireties, giving appropriate weight to the features
thereof, we find that the marks are similar in sound, appearance,
meaning and overall commercial impression, and that the
similarities between the marks far outweigh their differences.
The shared word PURSE, a term which although perhaps
suggestive of the goods, is nonetheless aurally and visually
the most significant part of both marks. It is the first word in
each mark and, moreover, it is the only nondescriptive portion of
the marks. See In re National Data Corp., supra at 751 ("That a
particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale for
Serial No. 77002927
5
giving less weight to a portion of a mark"). See also Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (noting the importance of the first part of a mark as
"most likely to be impressed upon the mind of a purchaser and
remembered."). The identical and significant first word PURSE is
followed in both marks by the generic name of a cosmetic product.
As a result, the two marks as a whole have a visually similar
structure and a similar overall sound.
The word PURSE is also significant in conveying the meaning
of the marks and their overall commercial impression. The words
GLOSS and POWDER have different, but related meanings, and when
PURSEGLOSS and PURSE POWDER are viewed as a whole and in the
context of the goods, the two marks suggest the very same thing -
cosmetics to carry in a purse. Purchasers are likely to assume
that PURSEGLOSS identifies another cosmetic product from
registrant rather identifying a different source for the product.
Contrary to applicant's contention, it is not significant
that applicant's mark, unlike registrant's mark, is presented as
a single term. The presence or absence of a space between the
two words does nothing to distinguish one mark from the other.
Applicant's mark may be considered "unitary" for disclaimer
purposes, but the compression of the words does not change the
meaning of the words or the commercial impression the mark as a
whole conveys. The word GLOSS still retains its generic meaning
Serial No. 77002927
6
in relation to the goods. See, e.g., In re Cox Enterprises Inc.,
82 USPQ2d 1040, 1043 (TTAB 2007) ("Without the space, THEATL is
equivalent in sound, meaning and impression to THE ATL and is
equally descriptive of applicant's goods.") Keeping in mind that
the comparison of the marks is not made on a side-by-side basis
and that recall of purchasers is often hazy and imperfect, this
is an insignificant detail that is not likely to be noticed or
remembered by consumers when seeing these marks at separate times
on closely related goods. See, e.g., Seaguard Corp. v. Seaward
International, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and
SEAGUARD are "essentially identical").
Applicant argues that the word PURSE is highly suggestive of
women's cosmetics products "which are usually carried by the
consumer in her purse."3 To support this contention, applicant
has submitted printouts of Registration No. 2833364 for the mark
PURSE YOUR LIPS for lip gloss; and Serial No. 78912940 for the
mark CURSE OF THE PURSE for lip gloss.4 Applicant also argues,
based on this evidence, that neither the cited registration nor
the third-party registration was cited against the third-party

3 We construe applicant's additional contention that the registered
mark is "descriptive" as an argument that the mark is weak, and not as
an impermissible collateral on the registration.

4 This evidence is untimely having been submitted for the first time
with applicant's brief. Trademark Rule 2.142(d). However, because the
examining attorney has not objected to the evidence and, moreover, has
considered it on the merits, the evidence is considered as properly of
record.
Serial No. 77002927
7
application; and that the PURSE YOUR LIPS registration was never
cited against PURSE POWDER. According to applicant, this is
evidence that the examining attorneys did not consider that the
marks would be likely to cause confusion, despite the common
presence of the word PURSE.
Applicant's arguments are not well taken. The fact that
none of those marks were cited against each other is irrelevant,
but in any event not surprising, as each mark creates a different
commercial impression from the other. Furthermore, neither of
the third-party marks is as similar to the cited mark as
applicant's mark.
We recognize that PURSE has a suggestive meaning in relation
to cosmetics. However, as we have stated, that suggestive
meaning is the same in both marks. Furthermore, contrary to
applicant's contention, the evidence fails to establish that
registrant's mark is highly suggestive or weak in relation to
these goods.
To begin with, pending applications are of no probative
value other than as evidence that they were filed on a certain
date. Moreover, the existence of one third-party registration
containing the word PURSE is not sufficient to show that the term
has been commonly registered for its suggestive meaning in
relation to cosmetics, or that the public is so familiar with
marks containing the word PURSE for cosmetics that they will rely
Serial No. 77002927
8
on other portions of the marks to distinguish them. In any
event, we certainly cannot find, based on this evidence, that the
scope of protection accorded registrant's mark should not extend
to applicant's highly similar mark for closely related goods.

Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.