HMB Pharma LLC

Trademark Trial and Appeal Board

Aug 8, 2016

No. 86328949 (T.T.A.B. Aug. 8, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re HMB Pharma LLC
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Serial No. 86328949
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Jay H. Geller, Esq. for HMB Pharma LLC.

Jacob Vigil, Trademark Examining Attorney, Law Office 113 (Odette Bonnet,
Managing Attorney).
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Before Seeherman, Masiello, and Heasley, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
HMB Pharma LLC (“Applicant”) has filed an application to register on the
Principal Register the mark SCORE in standard characters for “Gels for use as
personal lubricant; Personal lubricants; Personal sexual lubricants; Water-based
personal lubricants,” in International Class 5.1
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, if used in

1 Application Serial No. 86328949, filed July 4, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s asserted bona fide intent to use the
mark in commerce.
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connection with Applicant’s goods, so resembles the registered mark set for forth
below as to be likely to cause confusion or mistake or to deceive.

The cited mark is registered for “Condoms,” in International Class 10.2 When the
refusal was made final, Applicant filed three requests for reconsideration, all of
which the Examining Attorney denied. Applicant then appealed to this Board. The
case is fully briefed.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
1. The marks.
We first consider 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

2 Reg. No. 4590862, issued August 26, 2014. No claim is made to the exclusive right to use
CONDOMS apart from the mark as shown.
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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) (internal
quotation marks omitted). Moreover, marks must be considered in light of the
fallibility of memory. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014).
We first address Applicant’s fundamental contention as to the nature of the cited
registered mark. Applicant describes the portion of the cited mark that stands
above the word CONDOMS as follows:
The cited mark is a capital S, a less than sign (<), a
capital O, a design element or one and one-half curves
and three parallel lines.3
The thrust of Applicant’s argument is that the cited mark would not be perceived as
a series of letters in stylized form (as the Examining Attorney contends) but rather
as a combination of recognizable letters (i.e., S and O) and three arbitrary symbols
(i.e., the symbol standing between the S and the O and the two symbols standing to
the right of the O). The Examining Attorney, for his part, argues that this portion of
the mark “spells out the word ‘SKORE’ using no vertical lines.”4
We agree with the Examining Attorney’s characterization of this portion of the
mark. The three symbols do strongly resemble the letters K, R and E, and are
placed together with the two recognizable letters S and O. In the marketplace, the

3 Applicant’s brief at 8, 4 TTABVUE 9.
4 Examining Attorney’s brief, 6 TTABVUE 6.
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public is accustomed to seeing a wide variety of differently stylized lettering.
Although the three symbols may arguably be more stylized than the average,
because they are interspersed with clearly recognizable letters, customers will
recognize them as letters, rather than as inscrutable, meaningless symbols.
Supporting this finding is the fact that Registrant’s website at
, which displays the registered mark, also promotes the goods
under the text marks SKORE and SKORE CONDOMS.5 Amazon.com does the same
in discussing Registrant’s goods.6 (We have not considered the third-party websites
submitted with the Office Action of October 29, 2015, because they appear to
originate in India.) Having determined that customers will perceive Applicant’s
mark as being composed of stylized letters reading SKORE CONDOMS, we return
to comparing the two marks.7
In appearance, the registered mark contains the highly stylized lettering of its
first term and the word CONDOMS, which are absent from Registrant’s mark.
Moreover, the second letter of Registrant’s mark is more likely to be perceived as a
K than as a C, and in this regard it is different from the second letter of Applicant’s
mark. However, in comparing the marks we bear in mind that Applicant seeks to
register its mark in standard character form, such that its use would not be limited
to any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,

5 Office Action of September 2, 2015 at 11, 13.
6 Id. at 12.
7 We note Applicant’s argument that no weight should be given to any “pseudomark”
assigned by the USPTO to Registrant’s mark. 4 TTABVUE 7-8. We agree. Pseudomarks are
assigned by the USPTO for its own convenience, and have no probative weight to show that
a mark makes a particular commercial impression.
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939 (Fed. Cir. 1983) (“the argument concerning a difference in type style is not
viable where one party asserts rights in no particular display. By presenting its
mark merely in a typed drawing, a difference cannot legally be asserted by that
party.”). Therefore, when we compare the two marks we must consider the
possibility that Applicant could display its mark in a lettering style or styles that
resemble those appearing in Registrant’s mark. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012). Overall, we find that the two marks
resemble each other in appearance.
In sound, there is substantial similarity between the two marks as the first word
of Registrant’s mark would be perceived as SKORE, a misspelling of the word
SCORE, and therefore be pronounced the same as the entirety of Applicant’s mark.
Although the cited mark also contains the word CONDOMS, because this word is
the generic term for the goods, it is not a distinguishing point in terms of
pronunciation.
With respect to meaning, Applicant contends that the cited mark can have no
meaning because it is a meaningless combination of unrelated symbols and, even if
it is perceived as SKORE CONDOMS in stylized letters, “‘Skore’ is not a defined
term in the English language and therefore cannot have or convey the same
meaning as the word ‘score.’”8 The Examining Attorney contends that SKORE and
SCORE “are phonetically equivalent and … consumers are likely to believe the

8 Applicant’s brief at 9, 4 TTABVUE 10.
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words have the same meaning …”9 Among the various meanings of the familiar
word “score,” the Examining Attorney proposes that the following definition is most
relevant, because the goods of both Applicant and Registrant are sex-related
products:
verb
…
[NO OBJECT] informal Succeed in attracting a sexual
partner, typically for a casual encounter.10

Contrary to Applicant’s contention,11 there is some evidence to show third-party
interpretation of Registrant’s mark in this way. The Amazon.com advertisement for
Registrant’s goods states, “A great new way to score in bed – Skore Condoms.”12
Overall, customers would readily interpret Applicant’s mark to have one of the
recognized meanings of “score”; and because customers would view SKORE in
Registrant’s mark to be a misspelling of “score,” it would have the same meaning.
Although the word CONDOMS in Registrant’s mark is not present in Applicant’s
mark, because CONDOMS is the generic name of Registrant’s goods, its meaning
would not play a role in identifying the source of Registrant’s goods.
Considering the marks in their entireties, we find that the similarities outweigh
the differences and that overall the marks are similar in appearance, pronunciation
and meaning, and create highly similar commercial impressions. Accordingly, the

9 Examining Attorney’s brief, 6 TTABVUE 9.
10 Definition from , Office Action of October 21, 2014 at 13; Office
Action of September 2, 2015 at 6.
11 Applicant’s brief at 10, 4 TTABVUE 11.
12 Office Action of September 2, 2015 at 12.
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du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a
finding of likelihood of confusion.
2. The goods.
We next consider the similarity or dissimilarity of the goods as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom
Syst. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). It is not necessary that the products of the parties be similar or
even competitive to support a finding of likelihood of confusion. Coach Services Inc.
v. Triumph Learning LLC, 101 USPQ2d at 1722. Rather, likelihood of confusion
may be found if the respective products are related in some manner or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source. Id.
As an initial matter, we note that some of Applicant’s goods, i.e., “personal sexual
lubricants,” are, as identified, for use in connection with sexual activity. Condoms
also are for use in connection with sexual activity. In this regard, the goods are
complementary.
In order to show that relevant customers would likely believe that the goods of
Applicant and Registrant emanate from the same source, the Examining Attorney
has made of record excerpts from various commercial websites offering personal
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sexual lubricants and condoms under the same mark. Among these, we note the
following:
The website at states, “Already have condoms? Turn
up the heat with these personal warming lubricants and other great
personal lubricant products from LifeStyles® Condoms.”13 The website
offers, among many other similar goods, “LifeStyles Luxe TM Premium
Personal Lubricant” and “LifeStyles® SKYN® Premium Polyisoprene
Condoms.”14

The website at offers condoms and personal
lubricants under the DUREX mark.15

The website at offers personal lubricants and
condoms under the SUSTAIN mark.16

The website at offers lubricated condoms and water-
based lubricants and silicone-based lubricants under the ID mark.17

The Examining Attorney has also submitted 9 use-based, third-party registrations
(belonging to different registrants),18 all of which cover both condoms and personal
lubricants:
Reg. No. 3152721 Reg. No. 3632348 Reg. No. 4023357
Reg. No. 2915110 Reg. No. 4343000 Reg. No. 4133033
Reg. No. 4411738 Reg. No. 4359222 Reg. No. 4773040

Third-party registrations that are based on use in commerce and that individually
cover a number of different goods may serve to suggest that the listed goods are of a
type which may emanate from the same source. In re Albert Trostel & Sons Co., 29

13 Office Action of July 22, 2015 at 7.
14 Id. at 7-8.
15 Id. at 9-10.
16 Id. at 11.
17 Id. at 13-15.
18 Office Action of July 22, 2015 at 20-44.
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USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988).
Applicant argues that the presence of the word CONDOMS in Registrant’s mark
clearly informs customers that the only goods offered under Registrant’s mark are
condoms:
The fact that there may be companies that sell both
lubricants and condoms is not relevant when a mark
incorporates into the mark itself the goods to which it
refers. It would be nonsensical to claim that the mark
would also be confused with a SCORE lubricant since the
owner of the registration makes clear that its goods are
solely condoms.19
This argument is not well taken. A trademark is a symbol of the source of the goods;
it is not reasonable to read it as a catalogue of the goods offered under the mark.
There is no reason a trademark naming one type of goods cannot be used to identify
the source of another type of goods. An example of such use was quoted above:
“personal warming lubricants and other great personal lubricant products from
LifeStyles® Condoms.”20
We find the evidence discussed above sufficient to show that relevant customers
would readily believe that the goods identified in Applicant’s application and the
cited registration could emanate from a single source. Accordingly, the du Pont
factor of the similarity or dissimilarity of the goods weighs in favor of a finding of
likelihood of confusion.

19 Applicant’s reply brief at 2, 7 TTABVUE 3.
20 Office Action of July 22, 2015 at 7.
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3. Trade channels.
The Examining Attorney has made of record evidence demonstrating that
condoms and personal lubricants are offered in the same trade channels, specifically
pages from websites showing that the companies offer both types of goods. The
website includes, in its menu of “product type[s],” both
condoms and lubricants.21 The website at offers lubricants under
the PLEASE and SLIQUID marks alongside condoms under the SKYN, GLYDE,
DUREX and KIMONO marks.22 The website offers lubricant
under the PREMIER mark alongside condoms under the GLYDE, UNIQUE, and
RED RIBBON marks.23 Although the amount of evidence is somewhat limited,24 it
is sufficient to show that there is some overlap between the trade channels of the
two types of goods. To this extent, the du Pont factor of trade channels weighs in
favor of a finding of likelihood of confusion.
Applicant argues that we must not draw any conclusion regarding trade channels,
because “there is no evidence that the goods covered by the cited registration are
available for sale in the United States and therefore there can be no likelihood of
confusion based on speculation that the goods are in the same channels of trade as
applicant’s goods would be.”25 Applicant further argues that its own application

21 Office Action of October 21, 2014 at 21.
22 Id. at 22
23 Office Action of July 22, 2015 at 19.
24 The Examining Attorney submitted other web page evidence, but it is of limited probative
value because the nature of the goods offered is not legible.
25 Applicant’s brief at 11, 4 TTABVUE 12.
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“was based on intent to use and could be limited before registration to certain
channels of trade …”26 Neither of these arguments is well founded. The case before
us is not a direct contest between Applicant and Registrant. Rather, we are
comparing the rights evidenced by the cited registration (which we interpret under
15 U.S.C. § 1057(b)) with the rights of registration that Applicant seeks for itself.
“Trademark cases involving the issue of likelihood of confusion must be decided on
the basis of the respective descriptions of goods … [and] we give full sweep to
[Registrant’s] registration description of goods ….” Paula Payne Products Company
v. Johnson Publishing Company, Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
See also Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 16 USPQ2d at 1787
(“The authority is legion that the question of registrability of an applicant's mark
must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of
an applicant's goods, the particular channels of trade or the class of purchasers to
which sales of the goods are directed.”). Accordingly, because the evidence shows
that condoms and personal lubricants are sold through the same Internet websites,
we must assume that the goods as identified in the application and cited
registration travel through some of the same channels of trade.
4. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. On the present

26 Applicant’s reply brief at 2, 7 TTABVUE 3.
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record, we find that Applicant’s mark so resembles the cited mark as to be likely,
when used in connection with Applicant’s identified goods, to cause confusion as to
the source of Applicant’s goods.
Decision: The refusal to register is affirmed.