Flowery Beauty Products, Inc.

Trademark Trial and Appeal Board

Aug 19, 2005

No. 76438209 (T.T.A.B. Aug. 19, 2005)

Mailed:
Aug. 19, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Flowery Beauty Products, Inc.
________

Serial No. 76438209
_______

Jack L. Most of Goetz Fitzpatrick, for Flowery Beauty
Products, Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Walters and Grendel, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark SWEDISH CLOVER (in standard character form) for
goods identified in the application as “pedicure implement,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76438209
2
namely foot file for removing calluses,” in International
Class 8.1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that
the mark, as applied to the goods identified in the
application, so resembles the mark depicted below

1 Serial No. 76438209, filed August 1, 2002 on the basis of use
in commerce under 15 U.S.C. §1051(a). November 5, 1985 is
alleged in the application as the date of first use of the mark
anywhere and as the date of first use of the mark in commerce.

Ser. No. 76438209
3
previously registered for a variety of goods in Classes 8,
16 and 26, as to be likely to cause confusion, to cause
mistake, or to deceive.2 Trademark Act Section 2(d), 15
U.S.C. §1052(d). Although many goods in all three classes
are identified in the registration, the Trademark Examining
Attorney’s Section 2(d) refusal is based on the Class 8
goods identified in the registration as “pedicure sets.”
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed main appeal
briefs, and applicant filed a reply brief. No oral hearing
was requested. We affirm the refusal to register.
Initially, an evidentiary matter requires our
attention. Applicant attached to its main appeal brief
evidence which had not been made of record prior to the
filing of the appeal. That evidence consists of a
photocopy of a product catalog which served as the specimen

2 Registration No. 2763303, which issued on September 16, 2003
from an application filed on June 11, 2001. The registration
includes the following “description of the mark” statement:

The mark consists of two dark green strips, the top
strip containing the word ‘CLOVER’ and the design of a
clover. The two strips are placed above a design of
several clovers in various shades of green and in
different sizes over the wording ‘CLOVER MFG. CO. LTD.
JAPAN.’ The outline of the packaging is shown in
broken lines and is not part of the mark sought to be
registered. The broken lining shown on the drawing is
for showing the position of the mark in relation to
the packaging; no claim is made to the right to the
shape of the packaging itself.

Ser. No. 76438209
4
in the file of Registration No. 2763303, the registration
cited by the Trademark Examining Attorney as a Section 2(d)
bar to registration of applicant’s mark. In her appeal
brief, the Trademark Examining Attorney objected to this
evidence on the ground that it is untimely because it was
not made of record prior to the filing of the appeal.
We agree that this evidence, submitted for the first
time with applicant’s appeal brief, is untimely under
Trademark Rule 2.142(d), 37 C.F.R. §2.142(d), and we
therefore shall not consider it.
We hasten to add, however, that even if applicant had
made this evidence of record in a proper and timely manner,
its presence in the record would have had no effect on our
analysis or decision herein. According to applicant, the
catalog evidence shows that the owner of the cited
registration in fact does not use the registered mark on
“pedicure sets,” the goods identified in the cited
registration which are the basis of the Trademark Examining
Attorney’s Section 2(d) refusal. Rather, the catalog
displays only goods used in connection with sewing,
knitting, quilting and similar pursuits. Applicant argues
that because the specimen of use (the catalog) did not show
use of the mark on the “pedicure sets” included in the
application’s identification of goods, the examination of
Ser. No. 76438209
5
the application which matured into the cited registration
was flawed, and the registration should not have issued
with respect to “pedicure sets.”
In essence, and despite applicant’s protestations to
the contrary, applicant is arguing that the cited
registration is invalid to the extent that its
identification of goods includes “pedicure sets.”
Applicant repeatedly argues that, in making our likelihood
of confusion determination, we essentially should ignore
the presence of “pedicure sets” in the registration’s
identification of goods, and instead compare applicant’s
goods only to the types of sewing, knitting and quilting
products which are displayed in the registrant’s specimen
catalog.
We find that this argument of applicant’s constitutes
an impermissible collateral attack on the validity of the
cited registration which cannot be heard in this ex parte
proceeding. Section 7(b) of the Trademark Act, 15 U.S.C.
§1057(b), provides that a certificate of registration on
the Principal Register shall be prima facie evidence of the
validity of the registration, of the registrant's ownership
of the mark and of the registrant's exclusive right to use
the mark in commerce in connection with the all of the
goods or services specified in the certificate. During ex
Ser. No. 76438209
6
parte prosecution, an applicant will not be heard on
matters that constitute a collateral attack on the cited
registration (e.g., a registrant's nonuse of the mark). See
In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997); Cosmetically Yours, Inc. v. Clairol Inc.,
424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In
re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In
re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15
(TTAB 1988).
Thus, the registrant’s registration in this case is
presumed to be valid as to all of the goods identified in
the registration’s identification of goods, including
“pedicure sets.” It is well-settled that our likelihood of
confusion determination in an ex parte Section 2(d) case
like this one must be based on a consideration of the goods
as identified in the cited registration, regardless of what
the registrant’s actual goods might be shown to be (or not
be). See In re Dixie Restaurants Inc., supra.
Having resolved this evidentiary issue, we turn now to
the merits of the case. Our 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
likelihood of confusion issue. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Ser. No. 76438209
7
See also In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (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/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Restaurants Inc., supra.
We find that applicant’s goods, “pedicure implement,
namely foot file for removing calluses,” are closely
related to the “pedicure sets” identified in the cited
registration. First, we note that applicant has expressly
conceded that “pedicure sets may include foot file type
implements.” (Applicant’s main brief at 7). Applicant
likewise posits as “an undeniable fact” that “pedicure sets
often include files such as the Applicant’s.” (Applicant’s
reply brief at 4.) These admissions are corroborated by
the evidence properly made of record by the Trademark
Examining Attorney (as attachments to her October 30, 2004
final refusal). This evidence includes printouts from the
websites of at least four companies (Ki Wha Ind. Inc.,
FootSmart.com, PerfumeBay.com and Crabtree&Evelyn.com)
which are marketing pedicure sets which include foot files.
The Trademark Examining Attorney also has made of record
two third-party registrations which demonstrate the
Ser. No. 76438209
8
relationship between the respective goods. Registration
No. 1515089 is for goods identified in the registration as
“pedicure kits consisting of toe separators, nail clippers,
foot file and nail brush.” Registration No. 2805826 is for
goods identified in the registration as “manicure and
pedicure implements, namely, nail files, nail scissors,
nail clippers, foot files, nail pushers, nail buffers, nail
buffer blocks, cuticle trimmers, cuticle sticks, cuticle
pumice sticks, and pedicure wands.”3
This evidence establishes that applicant’s goods, as
identified in the application, are closely related to the
“pedicure sets” identified in the cited registration.
Indeed, as discussed above, applicant does not deny the
inherent relationship between these goods; applicant merely
argues (without avail, as discussed above) that registrant
is not actually marketing pedicure sets. We find that the
second du Pont factor weighs in favor of a finding of
likelihood of confusion.
We also find that applicant’s and registrant’s
respective goods, as identified in the application and the

3 Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar with
them, they nonetheless have probative value to the extent that
they serve to suggest that the goods listed therein are of a kind
which may emanate from a single source under a single mark. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Ser. No. 76438209
9
cited registration, would be marketed in the same trade
channels and to the same classes of purchasers. We also
find that these goods are ordinary, inexpensive consumer
items which would be purchased by ordinary consumers
without a great deal of care. Thus, the third and fourth
du Pont factors also weigh in favor of a finding of
likelihood of confusion.
We turn finally to the first du Pont factor, i.e.,
whether applicant’s mark and the cited registered mark are
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. We make this determination in accordance with
the following principles.
The test, under the first du Pont factor, 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
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. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
Ser. No. 76438209
10
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
We find that the dominant feature in the commercial
impression created by the cited registered mark is the word
CLOVER, which is an arbitrary, strong term as applied to
the goods at issue. The two dark strips at the top of the
mark are merely background carrier devices. The depictions
of clover designs merely refer back to the word CLOVER, and
reinforce the dominance of that word in the mark. The word
CLOVER appears again at the bottom of the mark, along with
the generic entity designation MFG. CO. LTD. JAPAN. That
entity designation has little or no source-indicating
significance of its own. It merely refers back to and
reinforces the significance of the word CLOVER as the
dominant source-indicating feature of the mark. For these
reasons, we find that CLOVER is the dominant feature of the
cited registered mark, and that it is entitled to the most
significance in our comparison of applicant’s and
registrant’s marks. See In re National Data Corp., supra.
Ser. No. 76438209
11
Comparing the marks in terms of appearance, sound and
connotation, we find that the marks are highly similar to
the extent that they both feature the arbitrary word
CLOVER. The additional elements in the cited registered
mark, i.e., the clover designs and additional generic
entity designation wording contribute little or nothing to
the mark’s commercial impression, and they do not
significantly distinguish the cited registered mark from
applicant’s mark.
The main point of dissimilarity between the two marks
is applicant’s addition of the word SWEDISH, which would be
perceived as modifying the word CLOVER. SWEDISH CLOVER has
a somewhat different connotation, sound and appearance than
has CLOVER per se. On balance, however, we find that the
basic similarity between the marks which results from the
presence of the arbitrary word CLOVER in both marks
outweighs the dissimilarity which results from applicant’s
addition of the word SWEDISH. As used on the closely
related goods involved in this case, SWEDISH CLOVER and
CLOVER are sufficiently similar that confusion is likely to
result. See, e.g., Coca-Cola Bottling Co. v. Joseph E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975)(BENGAL and BENGAL LANCER (and design) found to be
confusingly similar; applicant’s addition of LANCER (and
Ser. No. 76438209
12
design) to opposer’s mark BENGAL does not eliminate
likelihood of confusion). The first du Pont factor
therefore weighs in favor of a finding of likelihood of
confusion.
In summary, we find that because pedicure foot files
and pedicure sets are such similar items and so closely
related in the marketplace, and because CLOVER is such an
arbitrary term as applied to these goods, applicant’s
addition of the term SWEDISH to its mark does not eliminate
the likelihood of confusion. Purchasers familiar with
registrant’s CLOVER pedicure products are likely to assume,
upon encountering applicant’s SWEDISH CLOVER pedicure
products in the marketplace, that they are an extension of
the registrant’s CLOVER line of pedicure products.
Confusion is likely, and registration of applicant’s
mark therefore is barred under Trademark Act Section 2(d).
To the extent that any doubts might exist as to the
correctness of this conclusion, we resolve such doubts
against applicant. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.