Duane Reade International, Inc.

Trademark Trial and Appeal Board

Apr 2, 2009

No. 77303291 (T.T.A.B. Apr. 2, 2009)

Mailed:
April 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Duane Reade International, Inc.
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Serial Nos. 77303291 and 77303304
_______

Vanessa A. Ignacio of Lowenstein Sandler PC for Duane Reade
International, Inc.

Andrea P. Butler, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Duane Reade International, Inc. has appealed from the
final refusal of the trademark examining attorney to
register CITY CHIC, in standard character format, for
“cosmetics, body and beauty care cosmetics” in Class 3 and
“sweepstakes services” in Class 411 and for “catalogs in the
field of cosmetics and beauty care” in Class 16.2

1 Application Serial No. 77303304, filed October 12, 2007, and
asserting first use and first use in commerce as of September 14,
2007.
2 Application Serial No. 77303291, filed October 12, 2007, based
on an asserted intent to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77303291 and 77303304
2
Registration of both applications has been refused pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
on the ground that applicant’s mark so resembles the mark
, in the stylized form shown, previously
registered for “cosmetics; cosmetic smokey eye kits
comprised of shadow base, eye shadows, eyeliner pencil,
mirrored compact case, and pouch”3 that, if used on or in
connection with applicant’s identified goods and services,
it is likely to cause confusion or mistake or to deceive.
On November 7, 2008 applicant requested that the
appeals in the two applications be consolidated, and the
Board granted that request on November 20, 2008.
Accordingly, we issue a single decision in this
consolidated appeal.
We must first address a procedural issue. With its
consolidated appeal brief applicant submitted exhibits that
had not been made of record during the prosecution of its
applications, and also referenced for the first time
certain third-party registrations. The examining attorney
has objected to this evidence as untimely. The objection
is well taken. Trademark Rule 2.142(d) provides that the
record in the application should be complete prior to the
filing of the appeal. Accordingly, the NEXIS excerpts that

3 Registration No. 3161318, issued October 24, 2006.
Ser Nos. 77303291 and 77303304
3
comprise Exhibit A to the appeal brief, and the listing of
third-party registrations at page 8 of applicant’s brief
have not been considered. However, we have considered the
dictionary definitions that comprise Exhibit B. Although
not previously made of record, the Board may take judicial
notice of dictionary definitions. See University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
Because applicant is seeking to register its mark for
three classes of goods and services, we separately address
the issue of likelihood of confusion with respect to each.
Turning first to the goods in Class 3, applicant’s goods
are identified as cosmetics and body and beauty care
cosmetics. The cited registration also recites “cosmetics”
in the identification of goods, along with smokey eye kits
that contain various cosmetics items. Therefore, the goods
Ser Nos. 77303291 and 77303304
4
in the application and the registration are, in part,
identical. This du Pont factor favors a finding of
likelihood of confusion.
Because the goods are legally identical, they must be
deemed to be sold in the same channels of trade. We
acknowledge applicant’s statement, and the statement of its
senior vice president, that its goods are sold only in its
full-service Duane-Reade drugstores, as well as applicant’s
claim that the registrant’s goods are available only from
certain websites. However, because the identifications of
goods in the application and registration do not restrict
the channels of trade for the goods, we must presume that
the cosmetics are sold in all channels of trade appropriate
for such goods. See Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987) (the question of likelihood of confusion must be
determined based on an analysis of the mark as applied to
the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
the registration, rather than what the evidence shows the
goods and/or services to be); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). The du Pont factor of the channels of
trade favors a finding of likelihood of confusion.
Ser Nos. 77303291 and 77303304
5
The next factor we consider is the conditions of
purchase. Cosmetics are general consumer items, bought by
the public at large, at ages ranging from “tweens” to
seniors. Such consumers cannot be deemed to have any
particular sophistication or expertise. Further, cosmetics
range in price, and inexpensive cosmetics may be bought on
impulse, and without a great deal of care. For example,
applicant has submitted webpages showing that the
registrant’s CITYCHICK eyeliner pencil sells for $12.50.
This du Pont factor favors a finding of likelihood of
confusion.
This brings us to a consideration of the marks. This
du Pont factor is the one on which applicant concentrates
its arguments. It is applicant’s position that the marks
differ so significantly that there can be no likelihood of
confusion. We agree with applicant that the marks differ
in pronunciation and connotation. Although the examining
attorney states that there is no correct pronunciation of a
trademark, and that CHIC in applicant’s mark may be
pronounced as CHICK, CHIC is a recognized English word,
with a recognized pronunciation as “sheek.” See listings
from Dictionary.com, submitted by applicant with its
response filed May 12, 2008. The difference in
pronunciation between CHIC and CHICK results in the overall
Ser Nos. 77303291 and 77303304
6
marks being different in sound. Moreover, because of the
differences in these words, the overall marks differ in
meaning. CITY CHIC for cosmetics suggests that the
cosmetics provide a stylish and sophisticated look that
would be appropriate in a city or more formal environment.
CITYCHICK, on the other hand, with the use of the informal
or slang term “chick,” is the opposite of “sophisticated”;
it suggests that the wearer of the cosmetics is a hip
younger person who knows her way around in an urban
setting.
While we agree with applicant that the marks differ in
sound and connotation, we find that they are extremely
similar in appearance. Applicant’s mark CITY CHIC is
identical to the cited mark, except that it omits the final
letter “K”, and there is slightly more space between CITY
and CHIC than there is between the individual elements in
the cited mark. When these marks would appear on cosmetics
items displayed on racks, such as in drugstores, consumers
would not be likely to realize that applicant’s mark does
not have the final “K.” Instead, consumers who are
familiar with the registrant’s mark, upon
seeing CITY CHIC on identical cosmetics, are likely to read
the missing letter into the mark, or otherwise think the
letter is merely obscured by other products hanging next to
Ser Nos. 77303291 and 77303304
7
the particular cosmetics. For example, a consumer who
wishes to get a CITYCHICK eyeliner pencil to replace one
she already has is likely to merely grab the CITY CHIC
eyeliner pencil from the display rack without noticing that
the “K” is missing from that mark.
It is not necessary for marks to be similar in
appearance, sound, meaning and commercial impression in
order to be found confusingly similar. Similarity in only
one of these elements may be sufficient for such a finding.
Trak, Inc. v. Traq Inc., 212 USPQ 846 (TTAB 1981). In the
present case, given that cosmetics products sold in
drugstores are often taken by the consumer from display
racks, the similarity of the appearance of the marks takes
on great importance.
Given that the goods are identical, that they must be
presumed to be sold in the same channels of trade, and that
the goods are of a type that can be purchased on impulse
and without care, this strong similarity in the appearance
of the marks for outweighs the differences in pronunciation
and connotation. Further, the similarity in appearance
leads to some similarity in commercial impression. Based
on the du Pont factors of the identity of the goods, the
conditions of purchase, and the similarity of the marks in
terms of appearance, we find that applicant’s mark used for
Ser Nos. 77303291 and 77303304
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cosmetics and body and beauty care cosmetics is likely to
cause confusion with the cited registration.
In reaching this conclusion we have considered
applicant’s evidence of third-party registrations of marks
containing the word CITY for cosmetics, e.g., CITY GLAM
(Registration No. 3329147); CITY COLOR (Registration No.
2842511) and CITY LIPS (Registration No. 3057328). Even if
we accept that these registrations indicate that the word
CITY has a certain positive suggestion for cosmetics, our
finding that applicant’s mark is confusingly similar to the
cited mark is not based only on the inclusion in both marks
of the word CITY, but on the close similarity in appearance
of the marks as a whole.4
We have also considered the declaration submitted by
applicant attesting that it is unaware of any instances of
actual confusion. We find this declaration to be of little
persuasive value. First, applicant began to use its mark
for cosmetics on September 14, 2007, and the declaration
was signed in May 2008, so the period of contemporaneous

4 We also point out that, contrary to applicant’s claim that
many purveyors of cosmetics use CITY and CHICK in their marks,
applicant has not made of record any evidence of third-party use
of these terms for cosmetics. Third-party registrations are not
evidence of use of the marks shown therein, and the internet
evidence submitted by applicant shows CITYGIRL only for retail
store and internet sales services featuring cosmetics sold under
other companies’ marks, while SASSY CITY CHICKS appears to
identify shopping events.
Ser Nos. 77303291 and 77303304
9
use was less than one year. Second, applicant has
explained that it sells CITY CHIC cosmetics only in its own
Duane Reade drugstores and through its website, and that it
does not sell the registrant’s CITYCHICK cosmetics.
Applicant also has stated that its own search found that
the registrant’s goods were sold only through four
websites. Thus, the absence of any evidence of actual
confusion may be due to the limited marketing channels in
which the goods currently travel; however, as previously
discussed, in assessing likelihood of confusion we must
presume that the goods travel in all appropriate channels
for the goods, since the registrant’s registration gives it
the right to market its goods in all trade channels for
cosmetics, and if applicant were to obtain a registration
it, too, could market its goods in all such trade channels,
rather than just the channels in which it currently sells
its goods. Third, and perhaps most important, while a
showing of actual confusion is highly probative of a high
likelihood of confusion, the opposite is not true. As the
court stated in In re Majestic Distilling Co., 65 USPQ2d at
1202, “the lack of evidence of actual confusion carries
little weight.”
Finally, we have considered, but disagree with,
applicant’s argument that the effect of potential confusion
Ser Nos. 77303291 and 77303304
10
is de minimis. Because cosmetics are goods purchased by a
significant portion of the general public, the potential
number who are likely to be confused is great.
These are the only du Pont factors that have been
discussed by applicant or the examining attorney or on
which we have any evidence. To the extent that any other
factors are applicable, we treat them as neutral.
We affirm the refusal of registration with respect to
Class 3 of applicant’s application Serial No. 77303304.
When we consider applicant’s application Serial No.
77303304 in Class 41 for sweepstakes services, however, we
reach a different conclusion. Although these services and
the registrant’s goods are related, a point that applicant
does not dispute, the nature of these services has an
effect on the conditions of purchase and, in turn, an
effect on the weight we give to the similarity of the
appearance of the marks as compared to the differences in
their pronunciation and connotation. One entering a
sweepstakes has a greater opportunity to view the trademark
than one merely grabbing a replacement eyeliner pencil.
For example, in the specimens submitted by applicant one
must fill out one’s name and several lines of contact
information. During the course of this, one has a greater
opportunity to view the mark, and to notice that it is CITY
Ser Nos. 77303291 and 77303304
11
CHIC, and not CITYCHICK. The differences in pronunciation
and, more importantly, connotation, therefore have more of
an impact. Moreover, as previously discussed, the mere
fact that both marks contain the word CITY is not a
sufficient basis for us to find likelihood of confusion.
Accordingly, we find that applicant’s use of CITY CHIC for
sweepstakes services is not likely to cause confusion with
the cited registration, and reverse the refusal of
registration with respect to Class 41 of the application.
As for application Serial No. 77303291 for catalogs in
the field of cosmetics and beauty care, applicant has
conceded that these goods and those identified in the cited
registration are related. Response filed May 12, 2008,
p. 9. However, as discussed in connection with the
sweepstakes services, consumers are more likely to take
note of the mark for a catalog because they will review the
catalog before picking it up in a store, or will have to
provide contact information if they request the catalog
through an internet website. As a result, the differences
in the pronunciation and connotation of the marks CITY CHIC
and CITYCHICK will be apparent to them. Accordingly, for
the same reasons we found no likelihood of confusion with
respect to applicant’s mark CITY CHIC for sweepstakes
Ser Nos. 77303291 and 77303304
12
services, we find no likelihood of confusion with respect
to catalogs in the field of cosmetics and beauty care.
Decision: The refusal with respect to Class 3 of
Application Serial No. 77303304 is affirmed; the refusal
with respect to Class 41 of Application Serial No. 77303304
is reversed; and the refusal with respect to Application
Serial No. 77303291 is reversed. After the expiration of
the appeal period, Application Serial No. 77303304 will be
forwarded to publication only for the services in Class 41;
Application Serial No. 77303291 will be forwarded to
publication as well.