Davion Inc.

Trademark Trial and Appeal Board

Dec 3, 2008

No. 77272318 (T.T.A.B. Dec. 3, 2008)

Mailed:
3 December 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Davion Inc.
________

Serial No. 77272318
_______

William J. Sapone of Coleman Sudol Sapone P.C. for Davion
Inc.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Hairston, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 5, 2007, applicant Davion Inc. filed an
application to register the mark (in standard
character form) on the Principal Register for goods
ultimately identified as:
baby lotion; baby oil; baby powder; body cream; body
lotion; body oil; body scrub; bath foam; facial
scrubs; facial washes; skin cream; skin moisturizer;
skin lightening creams; sunscreen cream, excluding
non-medicated lip balm in Class 3.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77272318
2
The application (No. 77272318) is based on applicant’s
allegation of a bona fide intention to use the mark in
commerce.
The examining attorney has refused to register
applicant’s mark under the provision of Section 2(d) of the
Trademark Act on the ground that the mark is likely to
cause confusion, to cause mistake, or to deceive as a
result of a registration for the mark BEE FREE in standard
character form for “non-medicated lip balm containing no
beeswax” in Class 3.1 15 U.S.C. § 1052(d). After the
examining attorney made the refusal final, applicant filed
a request for reconsideration and this appeal. We overrule
the examining attorney’s objection to the evidence attached
to applicant’s brief on the ground that “the proposed
evidence was untimely submitted.” Brief at unnumbered p.
3. Applicant correctly points out that the “affidavit and
point of purchase display were both submitted with” its
request for reconsideration and the “registration
certificate was placed in evidence by the Examining
Attorney.” Reply Brief at 1 (emphasis omitted).2

1 Registration No. 3144551 issued September 19, 2006.
2 We add that it is not clear why applicant had to re-submit
evidence that was already of record.
Ser. No. 77272318
3
Regarding the issue of likelihood of confusion, we
must consider the evidence of record as it relates to the
relevant factors set out in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 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).
We begin by addressing the relatedness of applicant’s
and registrant’s goods. Registrant’s goods are non-
medicated lip balm containing no beeswax. Applicant’s
goods include body cream, body lotion, body oil, skin cream
and sunscreen cream.3 Applicant’s goods exclude non-
medicated lip balm. Of course, we consider the goods as

3 “Likelihood of confusion may be found based on any item that
comes within the identification of goods in the involved
application and registration.” In re Davey Prods. Pty Ltd., 92
USPQ2d 1198, 1202 (TTAB 2009). See also Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
Ser. No. 77272318
4
they are described in the identification of goods. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). Therefore, applicant’s
goods are not limited to “lotions [that are] normally sold
in large size bottles or containers” (Applicant’s Brief at
11) and registrant is not limited to marketing its lip balm
with its other products (Shriver Aff. ¶ 8). Applicant’s
goods would include lotions sold in various size containers
including small, travel-size containers and registrant’s
goods include lip balms sold and displayed with other lip
balms.
The examining attorney argues that “the goods of the
parties could well be presumed to be from the same source
inasmuch as the goods relate to non-medicated skin
treatments.” Brief at 8. The examining attorney also
introduced into the record numerous copies of registrations
to show that the purchasers of the goods of applicant and
Ser. No. 77272318
5
registrant are likely to believe that there is some
relationship between the sources of the goods. Applicant
argues that the “other registrants manufacture and sell
multiple products, with multiple uses and functions, and
the different groupings themselves is not evidence of any
specific product relatedness.” Brief at 11.
While the examining attorney has submitted numerous
registrations, we have given little weight to those that
are not based on use in commerce, those that appear to be
house marks, or those that do not appear to include the
relevant goods. See, e.g., Registration Nos. 3320189;
3334622; 3320189; 3365778; 3352483; 3348377; 3324695; and
2969453. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988):
In arriving at this conclusion, we have given little
weight to the majority of the third-party applications
and registrations… [R]egistrations and applications
[filed under Section 44 of the Trademark Act] are not
even necessarily evidence of a serious intent to use
the marks shown therein in the United States on all of
the listed goods and services, and they have very
little, if any, persuasive value on the point for
which they were offered. Moreover, two of the four
registrations which were based on use were issued to
Saks & Company and to Knott’s Berry Farm, owners of a
large department store and an amusement or theme
center, respectively, where a wide variety of goods
and services are sold.

Ser. No. 77272318
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However, there is no requirement that, to be relevant,
a registration must only contain applicant’s and
registrant’s goods. It has long been held that:
Third-party registrations which cover a number of
differing goods and/or services, and which are based
on use in commerce, although not evidence that the
marks shown therein are in use on a commercial scale
or that the public is familiar with them, may
nevertheless have some probative value to the extent
that they may serve to suggest that such goods or
services are of a type which may emanate from a single
source.

Mucky Duck, 6 USPQ2d at 1470 n.6. See also In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB
2001) and Davey Prods., 92 USPQ2d at 1203.
The following use-based registrations, among others,
show that a common mark has been registered by the same
entity for lip balm and various products in the cited
registration. See, e.g., Registration No. 3403030 (NORMA
KAMALI WELLNESS for “skin cream, moisturizer, and lotion …
non-medicated lip balm”); 3393092 (TO BEE OR NOT TO BEE
NATURAL PRODUCTS for “body creams… body lotions… body oils…
non-medicated lip balm… non-medicated skin cream”); 3410634
(DR. CHRISTINE RODGERS DERMACEUTICALS for “body creams,
body lotions… lip balm… skin cream… sun screen”); 3183458
(BATH LAB for “lotions for body, face and hands, creams for
body, face and hands, skin moisturizer… lip balm”); 3321240
(RELAX BODYCARE for “non-medicated beauty care products,
Ser. No. 77272318
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namely, lip balm, shampoo, skin lotion, body lotion…
sunscreen creams”); 3276836 (NATURALLY RIGHT for “body
lotion… moisture stick, namely lip balm”); 3359474 (ALL THE
BUZZ for “lip balm… body lotion”); 3548251 (CHAMPAGNE
SANGRIA for “face and body lotion, cream, body butter, oil,
gel and spray… lip balm”); 3327394 (JEALOUS BEAUTY for
“body cream, body lotion… body oil… lip balm”); and 3253961
(THE SAVANNAH BEE COMPANY for “lip balm, tinted lip balm…
body lotion”).
We add that the fact that the goods are not identical
or used interchangeably does not mean that the goods are
not related. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (citing Recot,
Inc. v. Becton, 54 USPQ2d at 1898) (“[G]oods that are
neither used together nor related to one another in kind
may still ‘be related in the mind of the consuming public
as to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion
analysis’”). See also In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991):
It “has often been said 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 circumstances surrounding their
marketing are such that they would be likely to be
seen by the same persons under circumstances which
Ser. No. 77272318
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could give rise, because of the marks used thereon, 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
[party’s] goods or services.”

Regarding the purchasers and channels of trade for lip
balm and moisturizers and other skin care products, they
would be sold along with other health and beauty aids.
See, e.g., Shriver Aff. § 7 (Registrant’s products sold
“through retail centers”). Since there are no restrictions
in the identifications of goods, “we must presume that
applicant’s [and registrant’s goods] move in all channels
of trade that would be normal for such goods, and that the
goods would be purchased by all potential customers.”
Morton-Norwich Products, Inc. v. N. Siperstein, Inc., 222
USPQ 735, 736 (TTAB 1984). Purchasers who need lip balm
would overlap with purchasers of skin care products such as
moisturizer or body lotion.
Applicant argues that the “consumer would exercise
some care in purchasing these products” (Brief at 13).
While some consumers may exercise some care, these products
would nonetheless be sold to ordinary purchasers. Indeed,
registrant’s display seems to be designed to induce impulse
purchases. Shriver Exhibit. However, even if the
purchases are not normally impulse purchases, the evidence
would not permit us to conclude that most purchasers of lip
Ser. No. 77272318
9
balm and moisturizers are careful purchasers. Furthermore,
even if they did study the ingredients, many, nonetheless,
would be confused by similar marks on related products. In
re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB
1999) (“[E]ven careful purchasers are not immune from
source confusion”).
The next issue we will look at is the similarity of
applicant’s B·FRĒ and registrant’s BEE FREE marks. This du
Pont factor requires examination of the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005).
The examining attorney argues that the “marks are
essentially phonetic equivalents and thus sound similar…
The marks could clearly be pronounced the same.” Brief at
6. On the other hand, applicant argues that the
“differences, particularly the different letters, spacing
and punctuation markings create an overall different
appearance.” Brief at 7. In addition, applicant argues
that registrant’s mark has only one possible pronunciation
but its mark can be pronounced “‘buh-free’, ‘ba-free’, ‘be-
free’ or ‘buh-fray’, ‘ba-fray’, ‘be-fray.’” Brief at 8.
Ser. No. 77272318
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Also, applicant argues that registrant’s mark would mean “a
product free of bee products,” while its mark “does not in
any way connote … a product that is free of beeswax.”
Brief at 9. Finally, the symbols in its mark give "a
commercial impression of a foreign sophistication to the
product.” Brief at 10.
We begin our comparison by noting that the marks are
both shown in standard character form so that they can be
displayed in the same style or type. In re Cox Enterprises
Inc., 82 USPQ2d 1040, 1044 (TTAB 2007) (“We must also
consider that applicant’s mark, presented in typed or
standard character form, is not limited to any special form
or style as displayed on its goods”). Regarding the
pronunciation of the marks, even applicant agrees that its
mark can be pronounced “be free” and, therefore, the marks
can be pronounced identically. We also point out that
there “is no correct pronunciation of a trademark, and it
obviously is not possible for a trademark owner to control
how purchasers will vocalize its mark.” Centraz Indus.
Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB
2006). Here, if the products are recommended or called for
in person or advertised on the radio, the marks, for many
purchasers, would be pronounced the same. In this context,
when they are pronounced the same, their meaning and
Ser. No. 77272318
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commercial impressions would similarly be identical. Banff
Ltd. v. Federated Department Stores, 841 F.2d 486, 6 USPQ2d
1187, 1192 (2d Cir. 1988) (It is “noted that the
similarities between standard typestyle ‘B Wear’ and ‘Bee
Wear’ are ‘so obvious and strong’ that the marks clearly
create the same overall impression to retail consumers.
This finding was reinforced by reference to the striking
oral and visual similarities between them”) (citation
omitted).
We add that even in appearance, the marks are not so
different that purchasers would likely rely on these
differences to conclude that the products come from
different sources. In re Research and Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“There is
little room to debate the similarity between ROPELOCK and
ROPELOK in appearance”); Bank of America Nat’l Trust & Sav.
Ass’n v. the American Nat’l Bank of St. Joseph, 201 USPQ
842, 845 (TTAB 1978) (The marks BANK OF AMERICA and
AMERIBANC “convey the same meaning and create substantially
similar commercial impressions”). Both marks begin with
the letter B and end with the term “fre(e).” The only
difference is the extra punctuation in applicant’s mark and
the fact that applicant shortens the word “Bee” to the
phonetically identical letter “B.” The difference between
Ser. No. 77272318
12
applicant’s dot and registrant’s space between the terms in
the mark is not significant. Accord Seaguard Corp. v.
Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984)
(SEA GUARD and SEAGUARD are “essentially identical”). We
add that:
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 impression that
confusion as to the source of the goods or services
offered under the respective marks is likely to
result. The focus is on the recollection of the
average purchaser, who normally retains a general
rather than a specific impression of trademarks.

Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
As a result, we find that the marks B·FRĒ and BEE FREE
are similar. They would have the same pronunciation and,
as a result, the same meaning and commercial impression.
Furthermore, the marks are similar in appearance. In
addition, the goods are related and that the channels of
trade and purchasers are overlapping. Therefore, we
conclude that there is a likelihood of confusion in this
case.
Decision: The refusal to register applicant’s mark
B·FRĒ on the ground of likelihood of confusion is affirmed.