Derma Sciences, Inc.

Trademark Trial and Appeal Board

Dec 22, 2004

No. 78127414 (T.T.A.B. Dec. 22, 2004)

Mailed: December 22, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Derma Sciences, Inc.
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Serial No. 78127414
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Wendy Boldt Cohen of Blackwell Sanders Peper Martin LLP for
Derma Sciences, Inc.
S.E. Hickey, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
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Before Simms, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Derma Sciences, Inc. (applicant), a Missouri
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark SPANGLE
for the following goods: “Bath beads, bath crystals, bath
foam, bath gel, bath oil, bath pearls, bath powder, and
non-medicated bath salts; body cream, body glitter, body
lotion, body oil, body powder and body scrubs; eye cream,
eye gel and eye shadow; face cream, face lotion, face mask,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78127414
2
face powder, face toner, facial emulsions, facial glitter,
facial scrubs, blush, lip balm, lip gloss and lip lotion;
hair conditioner, hair gel, hair glitter, hair mascara and
hair shampoo; cuticle conditioner, cuticle cream, hand
cream, hand lotion, nail cream and nail polish;
antibacterial soap, skin cleansing creams, skin cleansing
lotions, skin cream, skin lotions, skin moisturizers, skin
soap, skin texturizers and skin toners; massage oil and
essential oils for personal use.”1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15
USC §1052(d). Applicant and the Examining Attorney have
submitted briefs but no oral hearing was requested.
The Examining Attorney has refused registration under
Section 2(d), arguing that applicant’s mark SPANGLE so
resembles the registered mark PAILLETTES for the following
goods: “toilet soaps, perfumes, rouge, powder, lipstick,
beauty-creams for the face and for the body, after shaves,
bath-foams,”2 that confusion is likely. In the
registration, it is indicated that the mark PAILLETTES is
translated as “gold-dust, spangle.” It is the Examining
Attorney’s position that there is likelihood of confusion

1 Application Serial No. 78127414, filed May 9, 2002, based upon
applicant’s allegation of a bona fide intention to use the mark
in commerce.
2 Reg. No. 1,372,059, issued November 26, 1985, Sections 8 and
15 affidavit filed. The registration is owned by Enrico Coveri,
S.R.L., an Italian joint stock company.
Serial No. 78127414
3
of applicant’s mark SPANGLE with the registered mark
PAILLETTES, both marks used or to be used in connection
with substantially identical goods, under the doctrine of
foreign equivalents, because these words have the same
meaning. The Examining Attorney explains that under this
doctrine, an applicant may not register a foreign word if
the English-language equivalent has been previously
registered for similar products or services, and an
applicant may not register an English word if the foreign-
language equivalent has been previously registered for
similar goods or services.
In addition to the translation indicated in the
registration, the Examining Attorney relies on the
following additional definitions of “paillette”: “(a)
sequin, spangle. (b) [or] speck; [mica, lessive] flake”
[Webster’s New World French Dictionary (1992)]; and “1. A
small piece of metal or foil used in painting with enamel
2. A spangle used to ornament a dress or costume” [The
American Heritage Dictionary of the English Language,
Fourth Edition (2000)]. Based on these translations and
definitions, she argues that consumers will translate the
registered mark PAILLETTES into English, as “spangle,”
Serial No. 78127414
4
which is applicant’s mark.3 Also, even though “paillettes”
may have more than one meaning, she argues that even if
consumers translate “PAILLETTES” as “sequins,” that word
has the same or similar meaning as the word “spangle.” The
Examining Attorney also maintains that identity in meaning
or connotation alone is sufficient to preclude registration
of applicant’s mark. Because the goods here are
substantially identical and otherwise closely related
cosmetics and toiletry items (for example, toilet soaps,
powder, lipstick, beauty creams, bath foams), the Examining
Attorney maintains that less similarity of the marks is
needed to support a finding of likelihood of confusion than
if the goods are not as closely related.
Applicant, on the other hand, maintains that the
doctrine of foreign equivalents is not an absolute rule.
Rather, according to applicant, the test is whether U.S.
consumers familiar with the foreign-language mark “would
denote its English equivalent,” brief, 2, or translate the
mark into applicant’s mark. It is applicant’s position
that the respective marks SPANGLE and PAILLETTES are not

3 The Examining Attorney made this definition of “spangle” of
record: “1. A small, often circular piece of sparkling metal or
plastic sewn especially on garments for decoration.” The
American Heritage Dictionary of the English Language, Third
Edition (1992).
Serial No. 78127414
5
exact equivalents and that the marks are otherwise
completely different.
In this regard, applicant has pointed to various
definitions of the French word “paillettes” as follows: “1.
Scrap of gold that one finds in sands. 2. Small sliver of
a material, more or less shiny and stiff, mica specks, soap
flakes - small sliver of a shiny material used to decorate
fabrics, certain clothing - sequined suit of the white
clown. - pl. Pejorative. The world of appearances or
inauthenticity. The sequins of show business.” Le Petit
Larousse Grand Format 2002. The American Heritage
Dictionary of the English Language, 4th Edition (2000)
indicates that “paillette” is a French word meaning “a
small piece of metal or foil used in painting with enamel.”
The Collins French Dictionary (2002) defines “paillettes”
as “sequins; spangles” and “paillette” as “speck; flake.”
Accordingly, it is applicant’s position that where the
foreign word is capable of several translations, there can
be no similarity in connotation.
Applicant also argues that similarity in connotation
is only one prong of the likelihood of confusion analysis,
and that the mark SPANGLE, which applicant calls a
“uniquely American word” (brief, 6), and the French mark
Serial No. 78127414
6
PAILLETTES, are otherwise completely different in sight and
sound.
Finally, applicant maintains that, especially when it
comes to French marks used in connection with bath and body
products, which marks are intended to refer to or suggest
the allure of the French lifestyle, it is unlikely that the
U.S. buyer would translate the foreign mark, but rather
will take that mark as is without translating it. In sum,
applicant maintains that its mark and the cited registered
mark are not exact foreign equivalents, that even if
registrant’s mark were translated into an English word, the
marks SPANGLE and PAILLETTES are otherwise completely
different in appearance and pronunciation, so that
confusion is unlikely.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, in any likelihood of confusion analysis, two key
considerations are the similarity or dissimilarity in the
goods at issue and the similarity or dissimilarity of the
respective marks in their entireties. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
Serial No. 78127414
7
29 (CCPA 1976). Here, since some of the goods are closely
related if not identical, our focus must be on the
similarity or dissimilarity of the respective marks.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with applicant that
confusion is unlikely. First, as applicant argues, even if
there were no dispute that the marks being compared are
exact equivalents, it is improper to compare a foreign word
mark with an English word mark solely in terms of
connotation or meaning. "[S]uch similarity as there is in
connotation must be weighed against the dissimilarity in
appearance, sound and all other factors, before reaching a
conclusion on likelihood of confusion as to source." In re
Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983).
As the Court noted in that case, 220 USPQ at 113, “where
the only similarity between marks is in connotation, a much
closer approximation is necessary … to justify a refusal to
register on that basis alone where the marks otherwise are
totally dissimilar.” That is to say, any similarity in
connotation must be weighed against dissimilarity in
appearance and pronunciation as well as other factors
before reaching a conclusion on the question of likelihood
of confusion.
Here, applicant is correct that the French word
“paillettes” is not always exactly translated as “spangle.”
Serial No. 78127414
8
The definitions made of record by both applicant and the
Examining Attorney demonstrate this fact. “Spangle” is not
the exact equivalent of “paillettes,” but “paillette” or
“paillettes” may be translated into other words, such as
“sequin,” “speck,” “flake,” “gold-dust,” and other
multiple-word definitions such as “scrap of gold” and
“small piece of metal or foil.” Moreover, as applicant
contends, the marks SPANGLE and PAILLETTES are otherwise
completely different in sound and appearance, which are
factors that must be considered. See In re Ness & Co., 18
USPQ2d 1815 (TTAB 1991)(GOOD-NESS and LABONTE, French for
“goodness,” both used on cheese, held not likely to be
confused, the Board noting the dissimilarities in sound and
appearance of the marks); and In re Buckner Enterprises
Corp., 6 USPQ2d 1316 (TTAB 1987)(PALOMA, meaning both
“dove” and “pigeon,” not confusingly similar to DOVE). See
also In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975)(TIA
MARIA not likely to be translated as “AUNT MARY” by even
those familiar with Spanish).
We also note that the word “paillette” appears as an
English word in English language dictionaries. See, for
example, the definition of this word from the Webster’s
Third New International Dictionary of the English Language
(Unabridged) 1993, of which we take judicial notice.
Serial No. 78127414
9
“Paillette” is defined as “1. a: one of usu. several or
many small shiny objects (as spangles, sequins, beads,
jewels) applied in small loosely designed clusters as a
decorative trimming (as on women’s clothing or accessories
or on theatrical costumes) b. a trimming made of
paillettes 2: a fabric (as of silk) so woven or treated
as to give a shiny spangled effect.” Thus, this case does
not present a situation where the registered mark is only a
foreign-language word which must be translated into
English. The word “paillette(s)” also is an English word.
This fact also provides a reason for not applying the
doctrine of foreign equivalents in this case.
Accordingly, even though applicant’s goods are
identical or closely related to the goods in the cited
registration, we conclude that confusion is unlikely under
the doctrine of foreign equivalents because the marks are
not exact foreign equivalents. Also, the marks SPANGLE and
PAILLETTES are otherwise totally dissimilar in sound and
appearance.
Decision: The refusal of registration is reversed.