Fruit of the Earth, Inc.

Trademark Trial and Appeal Board

May 16, 2001

No. 75443473 (T.T.A.B. May. 16, 2001)

5/16/01
Paper No. 11
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fruit of the Earth, Inc.
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Serial No. 75/443,473
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James J. Murphy of Winstead Sechrist & Minick, P.C.
for Fruit of the Earth, Inc.
Paula B. Mays, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Fruit of the Earth, Inc. has filed an application to
register the mark MACRO EMULSION for “cosmetics, skin and
hair care products and bath and bathing products, sun care
products, namely, skin lotions, skin creams, after bath
lotions, bath gels, shampoos, sun block preparations, sun
screen preparations and sun tanning preparations.”1
1 Serial No. 75/443,473, filed March 3, 1998, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/443,473
2
Registration of the mark has been finally refused
under Section 2(e)(1) of the Trademark Act on the ground of
being merely descriptive, and under Section 2(d) of the
Trademark Act on the ground of likelihood of confusion with
the mark MINI- EMULSION, which is registered for “cosmetics
for hair use – namely, hair sprays, conditioners, lotions,
creams and shampoos.”2
The refusals have been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
Section 2(e)(1) Refusal
The Examining Attorney maintains that MACRO EMULSION
is merely descriptive of a feature of applicant’s cosmetic
products, namely, that these products contain “macro
emulsions.” To support her argument that the term
“emulsion” is widely used in the cosmetic industry, the
Examining Attorney has made of record excerpts from NEXIS
articles, of which the following are representative:
Since skin creams are emulsions, that is formulations
comprising oil and water, one way of overcoming this
problem has been to find a way of separating off the
Vitamin C...
Beauty Counter (April 1998);
2 Registration No. 1,262,136, issued under Section 2(f) on
December 27, 1983, Section 8 and 15 affidavits accepted and
acknowledged, respectively.
Ser No. 75/443,473
3
... share one of castor oil’s principle benefits,
mildness, which suggests appellation as primary
emulsifiers in a broad range of cosmetic emulsions.
Manufacturing Chemist (March 1998); and
Today’s cosmetic emulsions are not simply mixtures of
oil, water and emulsifier; they also contain a number
of active ingredients functioning to ameliorate the
condition of the skin ...
The objective of this work was to study the influence
of emulsion type and structure on the penetration of
vitamins as cosmetic active ingredients. An emulsion
of the w/o type and two different o/w emulsions are
compared with an oil solution as a standard.
Cosmetic and Toiletries (December 1997).
To demonstrate use in the industry of the term “macro”
in combination with “emulsion”, as one type of emulsion,
she has submitted the following excerpts:
The company offers a wide choice of silicone emulsions
ranging from micro, or clear emulsions to macro, large
particle size high deposition rate emulsions.
Inside Cosmetics (February 1998); and
Emulsion technology was reviewed within some excellent
papers. Modern Emulsion Systems; Macro-, Micro-,
Multiple and Water free were described by ...
Droplet size distribution was of particular interest
to the author who, in the case of macro-emulsions,
discovered relationships between this and the
emulsification work ...
Inside Cosmetics (May 1997).
Based on this evidence, the Examining Attorney argues that
MACRO EMULSION is merely descriptive of cosmetic products
containing or consisting of emulsions of this nature.
Applicant insists that the term “emulsion” is a
technical term used primarily in the chemical arts, and
Ser No. 75/443,473
4
would not be understood for its technical meaning by the
average consumer of cosmetic products. Applicant argues
that in order to comprehend the descriptive nature of the
term “emulsion,” a consumer would have to have an
understanding of chemistry. Because this is not true of
the ordinary consumer, according to applicant, MACRO
EMULSION would simply “conjure up a favorable impression of
the efficacy of Applicant’s goods” and, as such, be merely
suggestive of the nature of the goods. Even if widely used
in the industry, applicant maintains that consumers would
not understand the descriptive significance of the term as
applied to applicant’s goods.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a significant characteristic or feature
of the goods or services with which it is being used, or is
intended to be used. See In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215 (CCPA 1978). Whether or not a
particular term or phrase is merely descriptive is
determined not in the abstract, but rather in relation to
the goods or services for which registration is sought, the
context in which the designation is being or is to be used,
and the significance the designation is likely to have to
the average purchaser as he or she encounters the goods or
Ser No. 75/443,473
5
services bearing the designation, because of the manner in
which it is used. See In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). It is not necessary that the term or
phrase describe all the characteristics or features of the
goods or services in order to be merely descriptive; it is
sufficient if the term or phrase describes one significant
attribute thereof. See In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991).
We find the evidence provided by the Examining
Attorney adequate to establish the widespread use in the
cosmetic industry of the term “emulsion” as a component or
type of formulation used in the manufacture of cosmetic
products similar to those of applicant. If there were any
doubt in our minds, this is resolved by looking to the
following dictionary definition, of which we take judicial
notice:
emulsion 1.Physical Chem. any colloidal suspension
of a liquid in another liquid. 2. such a
suspension used in cosmetics.
Random House Dictionary of the English
Language (2d ed. 1987).
The modifier “macro” has been shown to describe a
particular type of such an emulsion, namely, one of a
larger particle size. Even if ordinary consumers may not
be familiar with the meaning of these terms or their
relation to cosmetic preparations, competitors in the
Ser No. 75/443,473
6
cosmetic industry would clearly be aware of their
descriptive significance. Applicant has admitted as much.
The terms “emulsion” and “macro emulsion” having been
shown to be terms of art in the cosmetic industry, we are
convinced the terms should be available to the entire
industry for descriptive use. As we recently stated in In
re Styleclick.com Inc, 57 USPQ2d 1445, 1448 (TTAB 2000)
[t]he intent of Section 2(e)(1) is to protect the
competitive needs of others, that is, “descriptive
words must be left free for public use.” In re
Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382,383
(CCPA 1986). As the Internet continues to grow,
merely descriptive “e-” prefix terms for Internet-
related goods and/or services must be kept available
for competitive use by others.
In similar manner, descriptive terms or terms of art used
within the cosmetic industry must be left free for use by
applicant’s competitors. This holds true whether or not
the average purchaser of the cosmetic products would
comprehend the descriptive significance of the words. The
designation “macro emulsion” falls within this category and
thus is properly refused registration under the provisions
of Section 2(e)(1).3
3 We note that the mark cited in the Section 2(d) refusal, MINI-
EMULSION, was only registered after proof of acquired
distinctiveness under the provisions of Section 2(f).
Ser No. 75/443,473
7
Section 2(d) Refusal
Our determination of likelihood of confusion is made
on the basis of those of the du Pont4 factors which are
relevant in view of the evidence of record. Two key
considerations in any likelihood of confusion analysis are
the similarity or dissimilarity of the respective marks and
the similarity or dissimilarity of the goods or services
with which the marks are being used. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976); In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999).
Looking first to the respective goods, we note that
applicant's goods include the hair care products and,
specifically, the shampoos of registrant. The remaining
cosmetic products of applicant are likewise personal care
products. Thus, for purposes of Section 2(d), the
respective goods are identical in part and otherwise
closely related. Applicant has in fact acknowledged the
“similarity between the goods.” (Brief, p. 6).
Furthermore, because there are no limitations in
either the application or registration as to any particular
channels of trade or types of purchaser, it is presumed
4 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/443,473
8
that the respective goods would travel in the same channels
of trade to the same class of customers. See Canadian
Imperial Bank of Commerce National Association v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d (Fed. Cir. 1987). The
goods are also relatively inexpensive items which would be
purchased without an undue degree of care.
Turning to a comparison of the respective
marks, we are guided by the well-established principle that
when the marks are to be used on virtually identical goods,
the degree of similarity necessary to support a holding of
likelihood of confusion decreases. See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992). Here, we are faced with the
potential use of applicant’s mark MACRO EMULSION and
registrant’s mark MINI-EMULSION on the same type of hair
care products, namely, shampoos.
The Examining Attorney argues that the marks create
similar overall commercial impressions in that both imply
that the products contain an “emulsion,” although in
varying degrees. As such, she contends, consumers would be
likely to believe that the products bearing the two marks
emanate from the same source.
Applicant, on the other hand, argues that the term
MACRO is the dominant feature of its mark, whereas MINI is
Ser No. 75/443,473
9
the dominant component of registrant’s mark. As a result,
applicant contends, the marks not only differ in appearance
and sound, but create different commercial impressions.
While MACRO EMULSION has the connotation of “something
large, extensive or all-encompassing in nature” and thus
gives the impression of “power and substance” in the goods,
the mark MINI-EMULSION suggests “smallness in a compound or
emulsifying products at a miniscule level” and does not
give the impression of “substantial or extensive action.”
(Brief, pp. 4-5).
Applicant likens the present situation to that in EZ
Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ
597 (TTAB 1982), aff’d 706 F.2d 1213, 217 USPQ 986 (Fed.
Cir. 1983), wherein the Board found, and the Court
affirmed, that there was no likelihood of confusion between
the applicant’s mark SUPER LOADER for boat trailers and the
opposer’s marks EZ LOADER and MINI LOADER for the same
goods. The Board held that, although the marks shared the
highly suggestive word LOADER, the marks as a whole did not
look or sound alike nor did they have similar connotations.
Applicant urges that a similar resolution is appropriate
here.
At the outset, we note that the mark of registrant, as
sought to be registered, was not inherently distinctive.
Ser No. 75/443,473
10
Nonetheless, registrant has obtained a registration on the
basis of acquired distinctiveness. As such, registrant’s
mark is entitled to full protection against the subsequent
registration by another of a similar mark for goods which
might reasonably be assumed to emanate from it.
Looking to the marks as a whole, we find it obvious
that there are differences in sound and appearance between
MACRO EMULSION and MINI-EMULSION. Nonetheless we find the
general overall commercial impressions created by the marks
to be similar. As has often been stated, purchasers are
not infallible in their recollection of marks and
frequently retain only a general or overall impression of
the marks. See Interco Inc. v. Acme Boot Company, Inc.,
181 USPQ 664 (TTAB 1974). Here both marks consist of a
word beginning with M- and the word EMULSION. The M- word
in each refers to a size. Thus, it appears highly likely
that purchasers would confuse or interchange the marks
MACRO EMULSION and MINI-EMULSION in their memories.
Moreover, even if purchasers recognize the differences
between the two marks, we are convinced that they might
well assume that products bearing the two marks originate
from the same source. Each mark shares the word EMULSION,
even if the exact connotation of the term is not understood
by the purchaser. In each mark the remaining term, MACRO
Ser No. 75/443,473
11
or MINI, is clearly indicative of a size or proportion.
Thus, when encountered on identical products, such as
shampoo, we think it highly likely that purchasers would
assume that these are companion products of different size
“emulsions” from a single source. This is especially true
considering the nature of the products, a new formula or
new ingredient often being touted in the introduction of a
companion cosmetic or personal care product. Cf. In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994)(purchasers likely
to assume marks SCREEN FAX PHONE and FAX PHONE identify two
different facsimile devices – one with a screen and one
without - emanating from a single source).
Finally, we find the present situation is not
comparable to that in the EZ Loader case cited by
applicant. It is true that here, as in that case, one of
the words in the mark may aptly be viewed as descriptive of
the involved goods. Here the word is EMULSION, there it
was LOADER. Here, as there, the question arises of whether
one mark might be thought to be a companion product from
the same source as the goods bearing the other mark. But
at this point the parallel ends. In that case, the Board
stated:
Opposer contends that “SUPER LOADER” might be
thought to be a companion product of its “MINI
LOADER.” We do not agree. The opposite of “MINI” is
Ser No. 75/443,473
12
“MAXI.” Although “MINI LOADER” is highly suggestive
of a trailer for small loads, this is distinctly a
different impression than that which is conveyed by
“SUPER LOADER.”
213 USPQ at 601.
Here the two words are MINI and MACRO, which could readily
be viewed as opposites with respect to the same attribute
or feature of the goods. Given the presence of the MINI-
EMULSION shampoo on the market, the appearance of the MACRO
EMULSION shampoo would be presumed to be a new variation or
a step-up companion product with the promise of improved
results emanating from the same source. There is no
distinctly different impression created by the substitution
of the word MACRO for MINI.
Accordingly, in view of the identical or closely
related nature of the respective goods, the common channels
of trade and common purchasers, the goods being purchased
without an undue degree of care and the relationship found
to exist between the respective marks, we find that
contemporaneous use of the marks is likely to cause
confusion.
Decision: The refusals under Section 2(e)(1) and
Section 2(d) are affirmed.
Ser No. 75/443,473
13