Daniel T. Phuoc

Trademark Trial and Appeal Board

Apr 29, 2009

No. 77356068 (T.T.A.B. Apr. 29, 2009)

Mailed: April 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Daniel T. Phuoc
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Serial No. 77356068
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Daniel M. Cislo of Cislo & Thomas for Daniel T. Phuoc.

Sani Philippe Khouri, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
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Before Quinn, Walters and Wellington, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Daniel T. Phuoc has filed an application to register
the standard character mark REVIVE WITH ‘THI’ on the
Principal Register for “medicated lotions for hand, body and
foot,” in International Class 5.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 77356068, filed December 19, 2007, based on an allegation
of a bona fide intention to use the mark in commerce. On May 7, 2008,
applicant filed an amendment to allege use and a specimen of use, which
were accepted by the examining attorney. Applicant alleges first use
and use in commerce as of April 5, 2008.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77356068

2
1052(d), on the ground that applicant’s mark so resembles
the standard character mark THI2 and the design mark shown
below,3 previously registered for “adhesives for affixing
false eyelashes; cosmetics; false eyelashes,” in
International Class 3,” that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse the
refusal to register.
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. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In

2 Registration No. 3284656, issued August 28, 2007. The registration is
owned by Taylor Pham.

3 Registration No. 3284659, issued August 28, 2007. The registration is
owned by Taylor Pham and includes the following description of the mark:
“The mark consist of the word “THI” in lowercase letters, with the
lowercase “I” dotted by the design of a leaf.”
Serial No. 77356068

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re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test 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 or
services offered under the respective marks is likely to
result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715
(TTAB 2008). 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).
Serial No. 77356068

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Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Both of the cited registered marks consist of the word
THI, one in standard character form and the other in
stylized lettering. The stylization of the registered
design mark is minimal and we find that it is not a
distinguishing factor. Moreover, applicant seeks to
register his mark in standard character format and, thus,
applicant could conceivably display his mark in any
lettering style, including that of the word THI in
registrant’s design mark. See e.g., 37 C.F.R. § 2.52(a); In
re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988) (when registering mark in block letters, registrant
remains free to change the display of its mark at any time);
and Sunnen Products Co. v. Sunex Int’l Inc., 1 USPQ2d 1744
(TTAB 1987) (styling of letters is irrelevant to the issue
of confusion where applicant seeks to register mark without
any special form of lettering or design).
Applicant contends that the beginning phrase in his
mark “revive with …” sufficiently distinguishes his mark
Serial No. 77356068

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from the registered marks. Applicant argues that “revive”
is emphasized in the commercial impression of the mark
because it is the first word and because it “suggests the
product heals and restores something that is damaged, unlike
the impression of the registered mark.” Applicant makes the
following additional argument in his brief:
[T]he phrase REVIVE WITH THI has a rhyming quality
and the term as a whole gives a separate
impression apart from the two individual words
revive and thi included in the phrase. The fact
that REVIVE WITH THI has a somewhat internal
rhyming quality adds a certain phonetic
distinction that THI alone does not.

The cited registered marks consist of the single word
THI, which applicant has incorporated into his mark. There
is no indication in the record that THI is other than an
arbitrary word in English or in the context of either
applicant’s or registrant’s goods. Applicant submitted a
list of twenty-one marks that include the term THI from the
USPTO database; however, the list includes both applications
and registrations, the majority of these are abandoned or
cancelled/expired, the goods are not listed, and the marks
contain substantial additional matter. The list is not the
appropriate manner for making registrations or applications
of record in an appeal and it is not sufficient to make the
full records of the listed registrations or applications of
record. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 (TTAB
2007); and In re Duofold, Inc., 184 USPQ 638, 640 (TTAB
Serial No. 77356068

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1974). The listed applications establish nothing other than
that they were filed with the USPTO. Normally, a list of
registrations is not admissible, but in this case, the
examining attorney did not object to its submission, so we
consider the list to be of record; however, given its
deficiencies, it is of no probative value. Thus, this
evidence does not establish that the cited registered marks
are weak.
The phrase “revive with …” in applicant’s mark pertains
directly to the word THI in the mark and it suggests that
THI will “restore” the skin or emotional state of the user
of applicant’s product. As such, THI is the focus of
applicant’s mark, REVIVE WITH ‘THI.’ We do not agree with
applicant that there is any rhyme or internal rhythm to the
mark as a whole that is likely to be perceived by
prospective purchasers. Applicant’s mark is likely to be
perceived as a derivative of, or somehow related to, the
registered mark THI, if used in connection with related or
similar goods or services. While the marks are different in
sound and appearance due to the addition of the phrase
“revive with …” in applicant’s mark, we find that the
connotations and commercial impressions of the respective
marks are substantially similar and, thus, the marks in
their entireties are substantially similar.
Serial No. 77356068

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The du Pont factor of the similarities of the marks
favors a finding of likelihood of confusion.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some manner or
that some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
Serial No. 77356068

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therein; and Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002).
Applicant’s goods are identified as “medicated lotions
for hand, body and foot” and the goods in the two cited
registrations are identified as “adhesives for affixing
false eyelashes; cosmetics; false eyelashes.” The examining
attorney submitted a definition from the website
www.dictionary.cambridge.org of “cosmetics” as “substances
put on the face or body that are intended to improve its
appearance or quality,” and argues, essentially, that
applicant’s and registrant’s goods are related because they
both fall within this definition of “cosmetics.” In support
of this position, the examining attorney submitted ten use-
based third-party registrations that are allegedly for
“cosmetic-type goods and medicated lotions.” The third-
party registrations consist of: five registrations that
include lotion and medicated lotion; one registration that
includes skin care products and medicated lotion; two
registrations for distributorship services for various goods
including cosmetics and medicated lotion; one registration
for lotion and medicated lotion and the manufacture for
others of cosmetics and skin care products; and one
registration for medicated lotion and polymers for the
manufacture of cosmetics and skin care products.
Serial No. 77356068

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We agree with applicant’s contention that the examining
attorney’s definition of “cosmetics” is extremely broad and,
we take additional judicial notice of the definition in
Merriam-Webster’s Collegiate Dictionary (11th ed, 2003) of
“cosmetic” as, in relevant part, “of, relating to, or making
for beauty esp. of the complexion: beautifying.” In other
words, “cosmetics” are, in everyday parlance, “make-up,” and
are usually applied to the face. Clearly, the “false
eyelashes” identified in the cited registrations are
“cosmetics.” However, we do not agree that applicant’s
medicated lotion is likely to be considered a “cosmetic.”
This is supported by the fact that the PTO identifications
of goods in the third-party registrations separately
identify “medicated lotions/skin care products” and
“cosmetics.” Moreover, even if applicant’s medicated lotion
were to be considered a “cosmetic,” the mere fact that
applicant’s and registrant’s goods might belong to the broad
category of cosmetics does not require the conclusion that
they are related products. Such a relationship must be
established in each case to avoid a per se rule for all
cosmetics.
We find that the third-party registrations are not
probative of a relationship between applicant’s and
registrant’s goods because these registrations do not
include both medicated lotions and either cosmetics, false
Serial No. 77356068

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eyelashes or adhesives for such. Six of the registrations
are limited to medicated and non-medicated lotions/skin care
products and do not include cosmetics. The registration for
medicated lotions and polymers for manufacturing cosmetics
and skin care products establishes only that such products
may contain polymers manufactured at the same facility. The
registration that includes the service of manufacturing
cosmetics and skin care products for others and the two
registrations for distributorship services do not specify
whether the finished or distributed products are identified
by the same marks, and we cannot reach this conclusion from
the identification of services.
In this case, the examining attorney has not met the
required burden of proof because the record is entirely
devoid of evidence that the involved goods are related and
we cannot draw any such conclusion based only on the
language of the respective identifications of goods.
Therefore, despite the similarities in the marks, we
find the lack of any evidence that consumers would perceive
a relationship between applicant’s and registrant’s
identified goods to be dispositive. We conclude that that
examining attorney has failed to establish a likelihood of
confusion.
Decision: The refusal under Section 2(d) of the Act is
reversed.