FGX International Inc.

Trademark Trial and Appeal Board

Aug 24, 2020

88033162 (T.T.A.B. Aug. 24, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re FGX International, Inc.
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Serial No. 88033162
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Kay Lyn Schwartz and Lisa R. Hemphill of Foley & Lardner, LLP,
for Applicant, FGX International, Inc.

Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____

Before Kuczma, Heasley and Dunn,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
FGX International, Inc. (Applicant) seeks registration on the Principal Register of
SUNSENTIALS (standard characters claimed) for:
Sunglasses; contact lenses; eyeglass and sunglass lenses;
eyewear; spectacles; eyeglasses; reading glasses; eyeglass
lenses; eyeglass frames; cases for eyeglasses, spectacles
and sunglasses; cords for spectacles, eyeglasses and
sunglasses; neck cords for spectacles, eyeglasses and
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sunglasses; lanyards for spectacles, eyeglasses and
sunglasses, in International Class 9.1
Registration of Applicant’s mark was refused under § 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), due to a likelihood of confusion with the mark FUN SUN
ESSENTIALS (standard characters claimed) in Registration No. 5005434 owned by
My First Shades, Inc. (Registrant), registered for:
Sunglasses and component parts thereof and accessories,
namely, earstems, nose pieces, foam strips, shields and
lenses, in International Class 9.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested reconsideration of the refusal, which was denied. Applicant and
the Examining Attorney submitted briefs and Applicant filed a reply brief. For the
reasons set forth below, the refusal to register is affirmed.
I. Evidentiary Objection
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney objects to Exhibit 1 to Applicant’s Appeal Brief on the
ground that it was untimely submitted.3 Exhibit 1 is a copy of the specimen of use
Registrant filed with its application. Applicant argues:
This evidence is already in the full record of the file history
of the Registrant. Applicant was merely using the evidence
from the record, for ease of reference, to clarify the channel
of trade and the relevant consumers to whom Registrant

1 Application Serial No. 88033162 was filed on July 11, 2018, based upon Applicant’s declared
bona fide intention to use the mark, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
2 Registration No. 5005434 issued July 26, 2016.

3 Examining Attorney’s Appeal Brf., 9 TTABVUE 3.
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targets to purchase its goods sold under the FUN SUN
ESSENTIALS mark, which are very young consumers,
even infants. Said target market creates a particular
commercial impression for the mark, and Applicant was
pointing out what is already in the record. Therefore,
Applicant’s EXHIBIT 1 should be considered because (1)
the subject of the exhibit is already in the record; and (2) it
has probative value in that it helps to establish the
commercial impression created by the mark and the niche
consumers targeted.4
The cases cited by Applicant in support of its submission of Registrant’s specimen,
i.e., Exhibit 1 to its Appeal Brief, involve evidence that was timely submitted during
the examination of an application5, and so are inapplicable here, where Applicant
seeks consideration of evidence that was not submitted until after the filing of its
Request for Reconsideration and Notice of Appeal. If an applicant wishes to rely on
matter in the file wrapper of a cited registration, it must timely make it of record
during the prosecution of its application. The parts of the file wrapper of a cited
registration are not made of record by virtue of the examining attorney attaching to
an office action a printout detailing the particulars of the cited registration. In re
Giovanni Food Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011) (documents from file of
cited registration submitted with applicant’s appeal brief are late -filed and not
considered; examining attorney’s objection sustained); TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 1203.02(e) and 1207.01 (June 2020).

4 Applicant’s Reply Brief pp. 3 (12 TTABVUE 4).
5 See cases cited on pp. 2-3 of Applicant’s Reply Brief (12 TTABVUE 3-4): In re Hudson News
Co., 39 USPQ2d 1915, 1920 n.10, 1924 n. 18 (TTAB 1996), aff’d without opinion (Fed. Cir.
1997); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996); In re Berman
Brothers Harlem Furniture Inc., 26 USPQ2d 1514, 1515 (TTAB 1993); In re Murphy Door
Bed Co., 223 USPQ 1030, 1032 n.9 (TTAB 1984).
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The record in the application should be complete prior to the filing of an appeal.
Evidence should not be filed with the Board after the filing of a notice of appeal. If
the applicant or the examining attorney desires to introduce additional evidence after
an appeal is filed, the applicant or the examining attorney should submit a request
to the Board to suspend the appeal and to remand the application for further
examination. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Inasmuch as
Registrant’s specimen was not properly made of record, it has not been considered.
II. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of confusion
enunciated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Ft.
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”).
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We have considered all of the evidence as it pertains to the relevant DuPont
factors, as well as Applicant’s arguments (including any evidence and arguments not
specifically discussed in this opinion). DuPont, 177 USPQ at 567-68; see also Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (not all
of the DuPont factors are relevant to every case, only factors of significance to the
particular mark need be considered).
A. Similarity of the Goods, Channels of Trade and Classes of Consumers
We first consider the DuPont factors involving the similarity of Applicant’s and
Registrant’s goods, and their channels of trade and classes of customers. In
determining the similarity of Applicant’s and Registrant’s goods, it is sufficient if
likelihood of confusion for each class of goods is established for any item encompassed
by the identification of goods for that class. See In re Wacker Neuson SE, 97 USPQ2d
1408, 1409 (TTAB 2010) (citing Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Inasmuch as Applicant’s
sunglasses and sunglass lenses are also found in Registrant’s goods, the goods are in-
part identical.
Absent any restrictions in an application or registration, identical goods are
presumed to travel in the same channels of trade to the same class of customers. Cai
v. Diamond Hong, 127 USPQ2d at 1801 (“With respect to similarity of the established
trade channels through which the goods reach customers, the TTAB properly followed
our case law and ‘presume[d] that the identical goods move in the same channels of
trade and are available to the same classes of customers for such goods….’”) (citing
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In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same).
Accordingly, the DuPont factors regarding the similarity of the goods, as well as
the trade channels and customers, strongly favor a finding of likelihood of confusion.
B. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re Viterra, 101
USPQ2d at 1908. Where the goods of applicant and registrant are in-part identical,
as they are in this case, the degree of similarity between the marks required to
support a finding of likelihood of confusion is not as great as would be required with
diverse goods. In re Viterra, 101 USPQ2d at 1908; Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
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marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005 , 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). However, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. In re Nat’l Data, 224 USPQ at 751.
Looking at the marks in their entireties, Applicant’s mark SUNSENTIALS and
the cited registered mark FUN SUN ESSENTIALS are similar in appearance and
sound. Applicant’s mark SUNSENTIALS is comprised of the word “sun” followed by
the term “-sentials.” Although there is a slight difference in the sound and appearance
of the marks stemming from the lack of the “es-” preceding the shortened term
“- sentials” in Applicant’s mark versus Registrant’s mark FUN SUN ESSENTIALS,
it does not differentiate the meaning of the marks. Only when Applicant’s and
Registrant’s marks are compared in a side-by-side comparison, does the slightly
different spelling of “SUNSENTIALS” and “FUN SUN ESSENTIALS” become
apparent.
Applicant cites In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987)
(CROSSOVER for bras held not likely to be confused with CROSSOVER for ladies’
sportswear), In re British Bulldog, Ltd., and In re Sydel Lingerie Co., Inc., 197 USPQ
629 (TTAB 1977) (BOTTOMS UP for ladies’ and children’s underwear held not likely
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to be confused with BOTTOMS UP men’s clothing)6 in support of its argument that
the existence of distinguishing elements in pronunciation and appearance of the
marks are sufficient to avoid likelihood of confusion. But those cases involved
disparate goods; they are not applicable to this case, where the marks are used on in-
part identical goods.
Comparing the marks, the term SUNSENTIALS is essentially a telescoped
version of SUN ESSENTIALS, the last two words in Registrant’s mark. United
Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (“Therefore
consumers [of Applicant’s beauty information services] would likely understand the
mark [BEAUTV] to represent a ‘telescoped’ form of ‘BEAUTY TV.’”).
Applicant contends that purchasers would not confuse the two marks because
Applicant’s mark, SUNSENTIALS, is presented as a single word while Registrant’s
mark, FUN SUN ESSENTIALS, is comprised of three words.7 The absence of spaces
in Applicant’s mark SUNSENTIALS, and the presence of spaces in Registrant’s mark
FUN SUN ESSENTIALS, is of little significance in our comparison of the marks. See
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (“the
absence of a space in Applicant’s mark MINIMELTS does not meaningfully
distinguish it from Opposer’s [MINI MELTS] mark”); Mag Instrument Inc. v.
Brinkman Corp., 96 UPSQ2d 1701, 1714 (TTAB 2010) (“presence or absence of a
space before STAR does very little, if anything, to distinguish the two marks

6 See Applicant’s Appeal Brf. p. 5 (7 TTABVUE 9).
7 Applicant’s Appeal Brf. p. 4 (7 TTABVUE 8).
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[MAXSTAR versus MAG STAR]”); Giersch v. Scripps Networks Inc., 90 USPQ2d
1020, 1025 (TTAB 2009) (“the spaces that respondent places between the words
[DESIGNED TO SELL] do not create a distinct commercial impression from
petitioner’s presentation of his mark [DESIGNED2SELL] as one word”); Seaguard
Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks
‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical.” (internal
citation omitted)). The spaces in the marks are an insignificant difference that is not
likely to be noticed or remembered by customers when they encounter these marks
at separate times.
The issue is not whether the people will confuse the marks, but whether — taking
account of the identity of the goods and other factors — the marks will confuse the
people into believing that the goods come from or are associated with the same source.
In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972).
Under the first du Pont factor, we therefore consider whether and to what degree the
marks are similar.
Applicant argues that the Examining Attorney disregarded the term “FUN” in the
cited mark, which helps to create its distinctive visual, aural, and commercial
impression. Contrary to Applicant’s argument, the addition of the initial word “FUN”
in Registrant’s mark does not alter the meaning or commercial impression of its
mark, or otherwise diminish its similarity with Applicant’s mark; both marks suggest
that sunglasses and related goods are essential on sunny days. In the context of
Registrant’s mark, “FUN” is suggestive, reminding consumers that its sunglasses are
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essential wear when having “fun” in the sun. The meaning of “fun” in relation to a
characteristic of decorative wear such as sunglasses, is consistent with the overall
commercial impression formed by Applicant’s and Registrant’s marks. Thus, the
inclusion of the word “FUN” in Registrant’s mark is not sufficiently distinctive to
differentiate the marks.
When comparing marks, the test is not whether the marks can be distinguished
in 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 offered under the respective marks is likely to result. Cai v. Diamond Hong,
127 USPQ2d at 1801 (citing Coach Servs. v. Triumph Learning, 101 USPQ2d at
1721); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016). The proper
focus is on the recollection of the average purchaser, who retains a general rather
than specific impression of trademarks. In re Bay State Brewing, 117 USPQ2d at 1960
(citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d
1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107
USPQ2d 1424, 1430 (TTAB 2013)).
To the extent that purchasers notice the differences in the marks, they are likely
to believe that Registrant’s mark is a version of Applicant’s mark or that it represents
a product line extension. “Even those purchasers who are fully aware of the specific
differences between the marks may well believe, because of the similarities between
them, that the two marks are simply variants of one another, used by a single
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producer to identify and distinguish companion lines of products.” In re Great Lakes
Canning, Inc., 227 USPQ 483, 485 (TTAB 1985). Therefore, the marks
SUNSENTIALS and FUN SUN ESSENTIALS are similar in appearance, sound,
connotation, and commercial impression such that the inclusion of the word “FUN”
in Registrant’s mark does not avoid the likelihood of confusion between the marks.
This factor supports a finding of likelihood of confusion.
C. Number and Nature of Similar Marks in Use on Similar Goods
Under the sixth DuPont factor, we assess the extent to which the cited mark’s
strength may be attenuated by “[t]he number and nature of similar marks in use on
similar goods.” DuPont, 177 USPQ at 567; In re Chippendales USA Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”). For likelihood of confusion purposes, a mark’s strength “varies along a
spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Evidence of extensive registration and use of a term by others for similar goods
can be powerful evidence of the term’s weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136(Fed. Cir. 2015) (quoting Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). If the evidence
establishes that the consuming public is exposed to widespread third-party use of
similar marks for similar goods, it “is relevant to show that a mark is relative ly weak
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and entitled to only a narrow scope of protection.” Palm Bay Imps. v. Veuve Clicquot,
73 USPQ2d at 1693. However, Applicant points to no evidence of third-party actual
use, and instead relies only on third-party registrations. Third-party registration
evidence goes not to the commercial strength of Registrant’s mark, but rather its
conceptual strength. That is, “[u]se evidence may reflect commercial weakness, while
third-party registration evidence that does not equate to proof of third-party use may
bear on conceptual weakness if a term is commonly registered for similar goods or
services.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057
(TTAB 2017) (citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693,
694-95 (CCPA 1976)). See also In re Guild Mortg. Co., 2020 USPQ2d 10279 *3 (TTAB
2020) (“[E]vidence of third-party registrations is relevant to ‘show the sense in which
. . . a mark is used in ordinary parlance.’”).
According to Applicant, the terms “SUN” or “ESSENTIAL” and variations thereof
are so commonly used and weak that no one party is entitled to their exclusive use:
“The only conclusion to be drawn from this coexistence is that the cited mark is weak
and entitled to a narrow scope of protection.”8

8 See Applicant’s Appeal Brf. pp. 3-5 (7 TTABVUE 9-11).
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In support of the cited mark’s alleged weakness, Applicant submits twelve third-
party registrations9 arguing that third parties have registered marks containing
“SUN” or “ESSENTIAL” for similar goods10:
Registration No. Mark Goods or Services
2760605 SUN GUARD Spectacles to be worn on
the face of people having
tinted lenses that absorb
U-V radiation so that less
U-V radiation impinges on
the eyes of the wearer,
namely, sunglasses
2824519 SUN COVERS Eye wear, namely
eyeglasses and sunglasses
3387565 SUN TRENDS Eyeglasses; Sunglasses
3609309 SUN VALLEY SHADES Sunglasses
3955674 SUN REACTOR Eyewear; Reading glasses;
Sunglasses
4792411 SUN BUDDIES Sunglasses
4826238 SUN COAST ORIGINALS Eyewear, namely, sun-
glasses and eyeglasses;
cases for eyeglasses and
sunglasses and sunglass
chains and cords

9 This does not include two unregistered marks, Application Serial Nos. 87859864 for SUN
SQUAD which is pending and 88061710 for ESSENTIAL GEAR which was abandoned
October 14, 2019; and Registration No. 3576981 for ESSENTIALS BY A· B· S which was
cancelled September 20, 2019. See Applicant’s October 8, 2019 Request for Reconsideration.
A cancelled registration is evidence only that the registration issued, while a pending
application is evidence only that it was filed; the cancelled registration, pending and
abandoned applications are not evidence of use of the marks. See, e.g., In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1745 (TTAB 2018); Kemi Organics, LLC v. Gupta, 126 USPQ2d
1601, 1606 (TTAB 2018); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB
1987) (an expired or cancelled registration is evidence of nothing but the fact that it once
issued). Accordingly, we give those applications and registration no consideration.
10 See October 8, 2019 Request for Reconsideration and Exhibit B at TSDR 10-11, 13-29.
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5370206 SUN SEEKER Sunglasses
4750424 ESSENTIAL MIX Sunglasses; among other
goods
5104087 THE ESSENTIAL P5 Custom imprinting of pro-
motional products, inclu-
ding sunglasses, among
other goods
5104090 THE ESSENTIAL PERFECT 10 Custom imprinting of pro-
motional products, inclu-
ding sunglasses, among
other goods
5852443 ESSENTIAL BLUE SERIES Optical goods, namely,
sunglass lenses, among
other goods

Applicant’s reliance on these twelve third-party registrations, covering eight
registered marks containing “Sun,” and four registered marks that contain
“Essential,” is misplaced. These third-party registrations are entitled to little, if any,
weight given the differences in their use of “SUN” and “ESSENTIAL,” and in their
use of additional, non-descriptive terms rendering different commercial impressions.
Unlike cases where extensive evidence of third-party registered marks were found
to be “powerful on its face” inasmuch as “a considerable number of third parties use
[of] similar marks was shown,” Juice Generation, 115 USPQ2d at 1674, Applicant
submits only a limited number of third-party registrations for different marks, well
short of the volume of evidence found convincing in Juice Generation and Jack
Wolfskin, 116 USPQ2d at 1136. Moreover, the third-party registrations, while not
probative of third-party use, reveal that the cited mark is the only registered mark
other than Applicant’s mark which combines “Sun” with a name that is similar to
“Essential” i.e., “-sentials.” In view of the foregoing, these third-party registrations
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do not affect the meaning of the cited mark, nor do they support a finding that the
cited mark is weak or otherwise entitled to a narrow scope of protection.
On this record, Registrant’s mark FUN SUN ESSENTIALS is not so weak as to
permit the registration of Applicant’s very similar mark SUNSENTIALS, which
shares the identical first word “SUN” followed by “-SENTIALS,” for use on identical
and related goods. Moreover, even if marks containing the terms “SUN” and
“ESSENTIALS” are deemed to be weak, marks deemed “weak” are still entitled to
protection against registration by a subsequent user of a similar mark for identical-
in-part and closely related goods. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In re FabFitFun, Inc., 127 USPQ2d
1670, 1676 (TTAB 2018) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337,
83 USPQ2d 1123, 1125 (Fed. Cir. 2007)); In re Max Capital Grp. Ltd., 93 USPQ2d
1243, 1246 (TTAB 2010).
Under the sixth DuPont factor, the third-party registration evidence does not
support a finding that the cited mark is so weak or otherwise entitled to such a
narrow scope of protection that Applicant’s mark is not likely to cause confusion.
D. Conclusion
Applicant’s mark, SUNSENTIALS, and Registrant’s mark, FUN SUN
ESSENTIALS, are similar in part with respect to appearance and sound, and highly
similar with respect to meaning and commercial impression; both marks feature
“SUN” followed by “-SENTIAL,” or “ESSENTIAL;” the addition of “FUN” does not
serve to distinguish Registrant’s mark from Applicant’s mark. Given that Applicant’s
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and Registrant’s goods are identical-in-part, the wording SUNSENTIALS and FUN
SUN ESSENTIALS as used in each mark yields a similar commercial impression.
Moreover, “[w]hen marks would appear on virtually identical goods . . . , as is the case
here, the degree of similarity necessary to support a conclusion of likely confusion
declines.” In re Morinaga Nyugyo, 120 USPQ2d 1738, 1740-41 (TTAB 2016); In re
Max Capital Grp., 93 USPQ2d at 1248 (citing Century 21 v. Century Life, 23 USPQ2d
at 1700). Therefore, we find a likelihood of confusion between Applicant’s mark and
the cited mark for the identified goods.
Decision: The refusal to register Applicant’s mark SUNSENTIALS under § 2(d)
of the Trademark Act is affirmed.