First One Australia Pty Ltd.

Trademark Trial and Appeal Board

Jul 29, 2015

No. 86319915 (T.T.A.B. Jul. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re First One Australia Pty Ltd.
_____

Serial No. 86319915
_____

Michael W. Schroeder of Patel & Almeida PC,
for First One Australia Pty Ltd.
Dominick John Salemi, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
_____

Before Seeherman, Lykos and Shaw,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On June 25, 2014, First One Australia Pty Ltd. (“Applicant”) filed an
application seeking registration on the Principal Register for the mark displayed
below

Serial No. 86319915
- 2 -
for the following goods:1
Perfuming preparations for the air, namely, room perfume sprays; Reeds
and scented oils sold as a unit for use in room scent diffusers;
Preparations for perfuming or fragrancing the air, namely, potpourri,
essential oils, incense, incense cones, incense sticks, incense sachets,
incense sprays in International Class 3;

Candles; Scented Candles; Aromatherapy fragrance candles in
International Class 4; and

Air freshening preparations; Air purifying preparations in the nature of
air deodorizers; Room air fresheners; Household and room deodorants;
Preparations for neutralizing odors on surfaces, in carpets, textiles and in
the air; Odor neutralizing preparations for use on carpets, textiles and in
the air in International Class 5.

Registration was refused under Section 2(d) of the Trademark Act of 1946,
15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles
the following registered mark for the goods identified therein (listed below) that it is
likely to cause confusion or mistake or to deceive:2

1 Application Serial No. 86319915 filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The description of the mark is as follows: “The mark consists of stylized lettering
"NATUROMA" in white against a square oval background.” The colors red and white are
claimed as a feature of the mark.
2 Registration No. 4476040, registered January 28, 2014, alleging December 1, 2012 as the
date of first use anywhere and in commerce. The description of the mark is as follows: “The
mark consists of the wording ‘NATURAMA’ in stylized block letters that are touching each
other and in each letter are vertically positioned leaves and water drops.” Color is not
claimed as a feature of the mark.
Serial No. 86319915
- 3 -
All purpose cleaning preparation with deodorizing properties; All
purpose cleaning preparations; All-purpose cleaners; Automobile
cleaners; Automobile, tire, glass and wheel cleaning preparations;
Biotechnological chemical and spray cleaners for industrial and
household applications such as stain removal, odor elimination, and
bioremediation of many types of organic and hydrocarbon-based
materials; Biotechnological cleaning solution for eliminating odors,
breaking down organics, and removing stains; Carpet cleaners with
deodorizer; Cleaner for use on boats, engines, oil rigs, tobacco
paraphernalia, jewelry, toys, and appliances; Cleaning preparations
containing vitamins, minerals, plant extracts and/or botanicals, used to
preserve hard surfaces by rendering the surfaces free of aging agents;
Deodorizers for pets; Glass cleaners; Glass cleaning preparations; Gun-
cleaning preparations; Hand cleaners; Oven cleaners; Perfumes” in
International Class 3.

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the Request for
Reconsideration, the appeal was resumed.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors,
are discussed below.
We commence our analysis with a comparison of the goods as well as the
similarity or dissimilarity of established, likely to continue trade channels. We
Serial No. 86319915
- 4 -
consider the goods as they are identified in the involved application and the
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
Applicant points out that in this particular case, the Examining Attorney has
submitted no evidence to show that the involved goods are related and marketed in
the same trade channels, but instead relies on the conclusory statement that “the
goods of both parties involved perfumed and scented agents or goods impregnated
with the same” and that “there is really little difference between the two parties
respective product lines.” Applicant’s Brief, p. 18; 8 TTABVUE 19.3 Applicant
argues that the goods are distinct insofar as they consist of fragrance impregnated
goods for leisure and relaxation whereas Registrant’s goods are odor neutralizers,
cleaners, and stain removal preparations. As such, Applicant contends that the
involved goods are marketed in different trade channels and targeted to different
consumers, “consumers of aromatherapy products used for leisure” versus
“consumers in need of a functional product, used to aid cleaning.” Id. at 19; 8
TTABVUE 20.

3 Citations to the record throughout the decision include references to TTABVUE. The
number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry.

Serial No. 86319915
- 5 -
As a preliminary matter, we note that insofar as the Examining Attorney’s
refusal applies to all three classes of goods, we shall consider these du Pont factors
as applied to each individual class.
With regard to the International Class 3 goods, the Examining Attorney argues
that both Registrant’s “perfume” and Applicant’s Class 3 goods are designed for the
same purpose of exposing the consumer to “desirable odors and scents.” However, as
Applicant has correctly points out, the Examining Attorney has submitted no
evidence to show the relatedness of these particular goods. Simply because both
“perfume” and Applicant’s identified goods can be used to provide “desirable odors
and scents” does not make the goods related. See Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010) (“[A] finding that the goods
are similar is not based on whether a general term or overarching relationship can
be found to encompass them both.”) (citing Harvey Hubbell Inc. v. Tokyo Seimitsu
Co., Ltd., 188 USPQ 517 (TTAB 1975) (the inquiry should be whether the goods
appeal to the same market, not whether a word can be found to describe the goods
of the parties)). In short, we cannot conclude, based on the record herein, that
consumers would assume that Applicant’s Class 3 and Registrant’s identified goods
would come from the same source. Absence any evidence to show that these goods
are related, we simply cannot draw the inference suggested by the Examining
Attorney.
Similarly, with respect to International Class 4, the Examining Attorney has
provided no evidence to show that Applicant’s “Candles; Scented Candles;
Serial No. 86319915
- 6 -
Aromatherapy fragrance candles” are related to or marketed in the same trade
channels to the same consumers as Registrant’s “perfume” and “cleaning goods”
(Applicant’s Brief, pp. 18-19), or for that matter any of Registrant’s identified goods.
It is the Examining Attorney’s burden to prove that the involved goods are
related, and with respect to the Class 3 and 4 goods, he has failed to do so. In view
of this, we find that the Examining Attorney has failed to prove that Applicant’s
mark for these goods is likely to cause confusion with Registrant’s mark. See
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (a single du Pont factor may be dispositive ).
We reach a different determination, however, with respect to the goods in Class
5. Again, we acknowledge that the Examining Attorney has submitted no evidence
to prove that the goods are related or marketed in established, likely to continue
trade channels. Nonetheless, we find Applicant’s “[p]reparations for neutralizing
odors on surfaces, in carpets, textiles and in the air; [o]dor neutralizing
preparations for use on carpets, textiles and in the air” to be the functional
equivalent of Registrant’s “[a]ll purpose cleaning preparation with deodorizing
properties” and “[c]arpet cleaners with deodorizer.” That is to say, from the
identifications themselves, we can conclude that the purpose of the goods is the
same – to deodorize, neutralize or eliminate unpleasant odors from carpets.
In view thereof, the remainder of the Section 2(d) analysis shall pertain to
Applicant’s Class 5 goods.
Serial No. 86319915
- 7 -
We now direct our attention to the first du Pont likelihood of confusion factor
which involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901,
1905 (TTAB 2007)). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
That being said, our analysis cannot be predicated on dissection of the involved
marks. Stone Lion, 110 USPQ2d 1at 1161. Rather, we are obliged to consider the
marks in their entireties. Id. 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.”). Nonetheless, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
Serial No. 86319915
- 8 -
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Stone Lion, 110 USPQ2d at 1161.
The Examining Attorney argues that because the word portions of the marks are
nearly identical in appearance, sound, connotation, and commercial impression, the
additional design element in each mark does not obviate the similarity of the
marks. Applicant, however, maintains that when considered as a whole, the marks
have distinct visual presentations, pronunciations, connotations, and commercial
impressions. As to the literal element of each mark, Applicant contends that the
Trademark Examining Attorney has improperly dissected the marks by focusing
only on the shared literal portion “NATUR-.”Applicant points to the differences in
the suffixes “-OMA” versus “-AMA.” As a result, Applicant argues that its mark is
pronounced as “nay-chur-OH-mah” with a long “O” vowel sound, whereas
Registrant’s mark is pronounced as “nay-chur-AH-mah,” with a short “A” sound. In
addition, Applicant maintains that the connotation of Applicant’s mark differs
because the suffix “-OMA” alludes to the word “aroma.” By contrast, Applicant
asserts, the suffix “-AMA” is alludes to the word “panorama.”
Applicant’s arguments are unconvincing. The literal portions of both marks are
fanciful terms that are similarly constructed. Applicant’s mark and the literal
component of Registrant’s mark both begin with the same letter string or prefix,
“natur-”, an obvious play on the word “nature.” Hence, the marks are likely to
convey a similar meaning that their respective products are derived from natural,
Serial No. 86319915
- 9 -
as opposed to manmade, elements.4 Both marks have four syllables ending with the
phenome “ma”, with the sole distinction in each mark embedded in the third vowel
syllable. We are not persuaded that consumers would even note the single letter
difference in the marks. And we certainly are not convinced that the marks would
be pronounced so differently that consumers would readily distinguish the marks
based on their pronunciation. It is a well-established principle that there is no
correct pronunciation of a trademark. Embarcadero Techs., Inc. v. RStudio, Inc.,
105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358,
1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012)); In re The Belgrade Shoe Co., 411
F.2d 1352, 1353, 162 USPQ 227, 227 (CCPA 1969). Applicant’s own arguments bear
this out. Applicant has said variously that the “A” in the penultimate syllable of the
registered mark would be pronounced with a long “A” (AY-MA), a short “A” (to
rhyme with “panorama”) and as “AH.” Given the uncertainty as to the “correct”
pronunciation of the two marks, prospective consumers may pronounce the literal
portion of each mark in a similar fashion. Thus, the difference in the spelling and
sound of “NATUROMA” versus “NATURAMA” is insignificant and is not sufficient
to obviate a likelihood of confusion. See In re Energy Telecomm. & Elec. Ass’n, 222
USPQ 350, 351 (TTAB 1983).

4 The Board takes judicial notice of the definition of the word “nature” from the online
version of Merriam-Webster as “the physical world and everything in it (such as plants,
animals, mountains, oceans, stars, etc.) that is not made by people.” See In re White
Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of
online dictionaries that exist in print format or have regular fixed editions).
Serial No. 86319915
- 10 -
Applicant maintains that the prefix “natur-” is diluted and weak in connection
with fragrances and cleaning solutions. In support thereof, Applicant has made of
record various third-party registrations for the marks NATURA, NATURA MIA,
NATURADERM, NATURA BELLA, NATURA SI, NATURA HUMOR, NATURA
HOMEN, NATURA BRASIL, and NATURA SIBERICA purporting to show that
Registrant’s mark is entitled to a narrow scope of protection.5 As often stated,
because third-party registrations are not evidence that the registered marks are in
use, they are of limited probative value for demonstrating weakness of the marks.
See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
That being said, third-party registrations may be used to show that a term has a
meaning or significance in the same way that dictionaries are used. Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976). See also The
Institut National des Appellations D'Origine v. Vintners International Co. Inc., 22
USPQ2d 1190, 1196 (Fed. Cir. 1992) (“third party registrations show the sense in
which the word is used in ordinary parlance and may show that a particular term
has descriptive significance as applied to certain goods or services.”) (internal
citations omitted). As we have acknowledged, the presence of the shared prefix
“natur-” is an indication that the term is suggestive of natural ingredients used in

5 See USPTO TSDR Case Viewer Application Serial No. 86319915, entries dated August 13,
2014 (Response to Office Action) and November 18, 2014 (Request for Reconsideration).
Insofar as Registration Nos. 3526971 and 3526197 were cancelled for failure to file Section
8 affidavits, they have not been considered.

Serial No. 86319915
- 11 -
cleaning and deodorizing products. However, as opposed to the third-party
registrations, there are greater similarities between Applicant’s and Registrant’s
mark than merely the shared letters NATUR. Rather, as discussed, Applicant’s and
Registrant’s marks are also a single-word four-syllabic term constructed in a similar
manner.
Applicant also argues that the Examining Attorney has improperly dissected the
marks by not considering the design element of Registrant’s mark and by focusing
only on the shared literal portion “NATUR-.” Applicant contends that the distinctive
leaf and water design of the cited mark is suggestive of eco-friendly, all natural
products whereas the large red oval design in Applicant’s mark is entirely devoid of
leaves, water droplets or anything remotely suggestive of nature.
As to the oval with two straight sides in which the words in Applicant’s mark
appear, we find that, in this case, the presence of this design fails to mitigate the
similar sound, appearance, and connotation of the marks. It is an often-recited
principle that when a mark consists of a literal portion and a design portion, the
literal portion is usually more likely to be impressed upon a purchaser’s memory
and to be used in calling for the goods or services; therefore, the literal portion is
normally accorded greater weight in determining whether marks are confusingly
similar. See, e.g., Viterra, 101 USPQ2d at 1911; In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d 1579,
1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98
USPQ2d 1261, 1267-68 (TTAB 2011). This is especially true here where the design
Serial No. 86319915
- 12 -
feature in Applicant’s mark merely serves as a carrier for the wording and does not
include a distinctive element with strong source-identifying characteristics. See In
re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1138 (TTAB 2015).
The cited mark does include, within the letters making up the word
NATURAMA, design features consisting of somewhat abstract designs of leaves.
(The description of the mark states the design includes rain drops, but we question
whether consumers would be able to pick this out when viewing the mark.)
Although the design creates a point of difference, we are not persuaded that
consumers will note this difference, or ascribe any significance to it in terms of
viewing it as indicating separate source of the Applicant’s and Registrant’s goods.
Hence, in comparing Applicant’s mark as a whole to the cited mark, we find that
the marks are very similar in sound, similar in connotation to the extent that both
convey the sense of “nature,” similar in appearance in that the only difference in the
dominant, literal element is embedded within the mark and unlikely to be noticed,
and similar in overall commercial impression. This first du Pont factor therefore
weighs in favor of finding a likelihood of confusion.
We will now focus on the next du Pont factor raised by Applicant, the number
and nature of similar marks in use on similar goods. In an ex parte appeal, “[t]he
purpose of [an applicant] introducing third-party uses is to show that customers
have become so conditioned by a plethora of such similar marks that customers
have been educated to distinguish between different such marks on the bases of
minute distinctions.” Palm Bay, 73 USPQ2d at 1694. If the evidence establishes
Serial No. 86319915
- 13 -
that the consuming public is exposed to third-party use of similar marks on similar
goods, it “is relevant to show that a mark is relatively weak and entitled to only a
narrow scope of protection.” Id. at 1693.
Applicant has introduced excerpts from various third-party web sites offering
identical or similar goods to those identified in the cited registration, including the
following:6
● NATURA (www.natura.com)
● NATURA SIBERICA (www.naturasiberica.com)
● NATURA BELLA (www.naturabellaspa.com)
● NATURA MIA (www.naturamia.com)
● NATURA MAX (www.essentialshield.com)
● CASA NATURA (www.casanaturaproducts.com)
● NATURAL ESSENTIALS (www.naturalessentialsbeauty.com)
● NATURA TRADING AROMATHERAPY (www.naturaltrading.ca)
● NATURA BISÉ (www.sears.com)
● NATURISIMO (www.naturisimo.com)
None of these marks projects either the same or similar meaning as the meaning of
Applicant’s applied-for mark or the mark in the cited registration. The majority of
the marks include as a separate term “natura.” None of the marks is constructed in
a similar fashion as Applicant’s and Registrant’s marks, as a single four syllable

6 See USPTO TSDR Case Viewer Application Serial No. 86319915, entry dated November
18, 2014 (Request for Reconsideration).
We have not considered web site excerpts which appear to be from foreign countries.
Serial No. 86319915
- 14 -
word commencing with “natur-” and ending with the phenome “ma.” Thus, even if
we accept that consumers can distinguish between various “NATUR” marks based
on other differences in the marks, in this case the marks have an overall similarity
that is not present in the third-party examples.
Applicant and the Examining Attorney have not discussed any other du Pont
factors. To the extent that there are any other factors which may be relevant, we
treat them as neutral.
In sum, after considering all of the evidence properly of record and arguments
pertaining to the du Pont likelihood of confusion factors, we find that there is a
likelihood of confusion between Applicant’s applied-for mark for its identified goods
in Class 5 but not for the goods in Classes 3 and 4. On another record, we may have
found otherwise.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to
International Class 5 but reversed as to Classes 3 and 4. After the period for appeal
expires, the application will be forwarded for publication for the goods in Classes 3
and 4.