Coyote Botanicals, Inc.

Trademark Trial and Appeal Board

Dec 4, 2001

No. 75695933 (T.T.A.B. Dec. 4, 2001)

12/04/01 Paper No. 10
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Coyote Botanicals, Inc.
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Serial No. 75/695,933
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I. C. Waddey, Jr. of Waddey & Patterson, PC for Coyote
Botanicals, Inc.

Jan Mooneyham, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Chapman, Wendel and Bottorff, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On May 3, 1999, Coyote Botanicals, Inc. filed an
application to register on the Principal Register the mark
COYOTE BOTANICALS for “topical gel for medical and
therapeutic use, namely, treatment of skin conditions such
as Actinic keratosis, Lentigines, and Seborrheic
keratosis.” Applicant disclaimed the word “botanicals.”
Applicant claimed a date of first use and first use in
commerce of October 1997.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/695933
2
ground that applicant’s mark, when used on applicant’s
identified goods, so resembles the registered mark COYOTE
MOON for “skin care products, namely, lotions,
moisturizers, soaps, cleansers and creams; hair care
products, namely shampoos and conditioners; essential oils
for personal use; and colognes,”1 as to be likely to cause
confusion, mistake, or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
The Examining Attorney essentially takes the position
that the dominant portion of applicant’s mark is the word
COYOTE, with the second word being descriptive; that both
marks share the identical first word, and are highly
similar in sound, appearance, and commercial impression;
that the respective goods are closely related in that they
are both skin care products; and that the record shows that
a single entity may offer for sale both medicated topical
skin care products (e.g., for treatment of acne) and non-
medicated skin care products (e.g., skin lotions and
moisturizers).
Applicant contends that the marks must be considered
in their entireties, and when so viewed, COYOTE BOTANICALS

1 Registration No. 2,183,048, issued August 18, 1998. The
claimed date of first use is December 1, 1996.
Ser. No. 75/695933
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and COYOTE MOON are dissimilar in sound, meaning and
commercial impression; that the respective goods are
dissimilar as applicant’s “goods are pharmaceutical in
nature and registrant’s goods are, in contrast, cosmetic in
nature” (brief, p. 3); that therefore the goods “would be
sold through different channels of trade and, even if they
goods were sold at the same retail store, they would be
placed in different aisles.” (Brief, p. 3).
Turning to a consideration of the respective goods,
the Examining Attorney has made of record copies of several
third-party registrations, most of which issued on the
basis of use in commerce, to show that various businesses
have registered a single mark in connection with both
medicated and non-medicated skin care products.
Third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent that they suggest that
the listed goods may emanate from a single source. See
Olde Tyme Foods Inc., v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992); and In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
Ser. No. 75/695933
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Moreover, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion; it is sufficient that the goods
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978);
and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Both applicant’s and registrant’s goods are skin
preparations applied for therapeutic or cosmetic purposes.
The following statement appears on applicant’s specimen
labels: “A centuries old herb, rich in minerals,
formulated for today’s skin. Regular use can help to keep
your skin conditioned and beautiful.” Thus, applicant
itself touts the cosmetic property of its product.
Based on the record before us, we conclude that
applicant’s goods, topical gel for medical and therapeutic
use, namely treatment of skin conditions, and the portion
of registrant’s goods which are skin care products, namely,
lotions, moisturizers, soaps, cleansers and creams are
related. That is, these goods bear a sufficient
relationship that the use of the same or similar marks on
Ser. No. 75/695933
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such goods would likely cause confusion. See Jean Patou,
Inc. v. Theon, Inc. 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir.
1993); and Neutrogena Corporation v. Bristol-Myers Company,
410 F.2d 1391, 161 USPQ 687 (CCPA 1969).
Regarding the respective trade channels and
purchasers, the Board must determine the issue of
likelihood of confusion on the basis of the goods as
identified in the application and the registration. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). As noted above, the topical gel for treatment of
skin conditions sold by applicant and the skin lotions
moisturizers, cleansers and creams sold by registrant,
while obviously separate products, are commercially related
items. Moreover, the identifications of goods include no
restrictions as to trade channels or classes of purchasers.
Both applicant’s and registrant’s goods, as identified,
could be offered and sold to the same classes of purchasers
through the same or overlapping channels of trade. That
is, purchasers may seek the therapeutic properties of
applicant’s product or a regular skin moisturizer to
condition their skin. See In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639
(TTAB 1981).
Ser. No. 75/695933
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Turning next to a consideration of the respective
marks, it is well settled that marks must be considered in
their entireties. However, our primary reviewing court has
held that in articulating reasons for reaching a conclusion
on the question of likelihood of confusion, there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
or portion of a mark. That is, one feature of a mark may
have more significance than another. See Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1798 (Fed. Cir. 1987); and In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
In this case, both applicant’s mark, and registrant’s
mark begin with the identical, arbitrary word COYOTE, which
is the dominant feature of applicant’s mark, and, as the
first word in the registrant’s mark, is the one most likely
to be remembered. Of course, there is an obvious
difference in the two involved marks, specifically that the
term MOON is the second word in registrant’s mark, while
the term BOTANICALS is the second word in applicant’s mark.
However, the second word has been disclaimed by applicant
as it is descriptive. In fact, purchasers are unlikely to
remember the specific difference between the marks due to
the recollection of the average purchaser, who normally
Ser. No. 75/695933
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retains a general, rather than a specific, impression of
the many trademarks encountered. That is, the purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d, Appeal No. 92-1086 (Fed. Cir.
June 5, 1992).
In any event, purchasers familiar with registrant’s
goods sold under the registered mark COYOTE MOON may, upon
seeing applicant’s mark COYOTE BOTANICALS on closely
related goods, assume that applicant’s goods come from the
same source as registrant’s goods, simply referring to a
new medicated type of skin lotion or cream.
We find that the marks, COYOTE BOTANICALS and COYOTE
MOON, are similar in sound, appearance, connotation and
commercial impression.
Any doubt on the question of likelihood of confusion
must be resolved against the newcomer as the newcomer has
the opportunity of avoiding confusion, and is obligated to
do so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, at
1440 (TTAB 1993).
Ser. No. 75/695933
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Based on the similarity of the marks, the relatedness
of the goods, and the similar or overlapping trade channels
and purchasers, we find that there is a likelihood that the
purchasing public would be confused when applicant uses the
mark COYOTE BOTANICALS for “topical gel for medical and
therapeutic use, namely, treatment of skin conditions such
as Actinic keratosis, Lentigines, and Seborrheic
keratosis.” See In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.