ICON S.R.L.

Trademark Trial and Appeal Board

Nov 4, 2020

87926954 (T.T.A.B. Nov. 4, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re ICON S.R.L.
_____

Serial No. 87926954
_____

Dennis H. Cavanaugh of D H Cavanaugh Associates,
for ICON S.R.L.
Clinton Johnson, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Lykos, Greenbaum and Lebow,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

ICON S.R.L. (“Applicant”) seeks to register on the Principal Register the
composite mark displayed below

for, as amended,
Preparations for grooming and cleaning the hair, in
particular shampoos, hair conditioners, hair creams, hair
masks, non-medicated hair serums, Hair gel and hair
mousse, conditioning preparations in the nature of hair
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conditioners, rinses and oils for hair conditioning, namely,
hair rinses and hair oils, hair gels, phials in the nature of
aromatic essential oils and hair oils, pomades for setting
the hair, preparations and products for dyeing in the
nature of hair coloring preparations and hair dyes and hair
rinses, Hair coloring preparations for coloring and
bleaching the hair, hydrogen peroxide-based cosmetics,
hair styling spray; cosmetics, in International Class 3.1
According to the application, the English translation of “UNA” in the mark is “ONE.”
During prosecution, Applicant disclaimed the word “phytology” apart from the mark
as shown.
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the composite
mark on the Principal Register displayed below that it is likely to cause confusion or
mistake or to deceive.

1 Application Serial No. 87926954, filed May 18, 2018, under Sections 1(a) and 44(e) of the
Trademark Act. The description of the mark is as follows: “The mark consists of the word
‘UNA’ in stylized font with a rectangle overlapping the top portion of the letter ‘U’ and the
wording ‘PHYTOLOGY RANGE’ in stylized font centered below the letters ‘NA’ in the word
‘UNA’.” Color is not claimed as a feature of the mark.
Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. References to the briefs
and other materials in the appeal record refer to the Board’s TTABVUE docket system.
Serial No. 87926954
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(BIOLOGICALS disclaimed) for goods identified as,
non-medicated skin care preparations; non-medicated,
organic skin care preparations; non-medicated skin care
products, namely, skin serum; non-medicated, organic skin
care products, namely, skin serum; non-medicated, organic
skin care products, namely, creams for facial skin renewal
and body care, facial cream, body lotion, cuticle cream,
hand cream, non-medicated lip balm, body polish, body
butter, body and foot scrub, foot cream, essential oils, facial
beauty masks, body massage oils, foot deodorant sprays,
pedicure soaks, pedicure scrubs, fragrance room sprays,
fragrance body sprays, fragrance sprays for the feet; all
purpose cleaning spray with deodorizer for yoga mats, flip
flops, rooms, interior of motor vehicles, and linens;
aromatic eye masks comprising potpourri in fabric
containers; non-medicated bath preparations; non-
medicated, organic bath preparations; non-medicated,
organic bath care products, namely, bath beads, bath foam,
bubble bath, bath crystals, body cleansing grains, bath
gels, bath lotion, bath oil, bath powder, and non-medicated
bath salts, in International Class 3.2
As with the application, the translation statement also states that “the English
translation of ‘UNA’ in the mark is ‘ONE.’”
When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney maintained the refusal to
register and denied the request for reconsideration. The appeal was resumed and is
now briefed. For the reasons set forth below, we affirm the Section 2(d) refusal.

2 Registration No. 4240559, registered November 13, 2012; combined Sections 8 and 15
declaration of use and incontestability acknowledged and accepted. The description of the
mark is as follows: “The mark consists of the stylized words ‘una BIOLOGICALS’. The word
‘una’ is in brown and in all lower-case letters. The word ‘BIOLOGICALS’ is in green and in
all upper-case letters. Above the word ‘una’ is a green fern leaf. Under the word ‘una’ is the
word ‘BIOLOGICALS’. The wording and fern leaf are set against a white background.” The
colors green, brown, and white are claimed as features of the mark.
Serial No. 87926954
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I. Likelihood of Confusion
Our determination under Section 2(d) is based 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) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only
to prevent buyer confusion as to the source of the goods, but also to protect the
registrant from adverse commercial impact due to use of a similar mark by a
newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort 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.”). We
discuss these and other factors below.
A. The Marks

This first DuPont likelihood of confusion factor involves an analysis of the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
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connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005) (citing DuPont, 177 USPQ at 567). “Similarity in any one of these elements may
be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x (Fed. Cir. 2019). Accord
Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”) (citation omitted).
“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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)
(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 this case we are comparing composite marks, marks comprised of both wording
and design elements. “The comparison of composite marks must be done on a case-
by-case basis, without reliance on mechanical rules of construction.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(c)(ii) (Oct. 2018). See, e.g.,
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Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015) (holding
that Board’s finding of similarity lacked substantial evidence because it minimized
the literal element in a composite mark); Spice Islands, Inc. v. Frank Tea & Spice Co.,
505 F.2d 1293, 184 USPQ 35 (CCPA 1974) (reversing Board’s holding that SPICE
TREE with tree design, for garlic powder and minced onion, and SPICE ISLANDS
with and without tree design, for seasoning herbs and spices, is not likely to cause
confusion). As with word marks, “[a]lthough it is not proper to dissect a mark, if one
feature of a mark is more significant than another feature, greater weight may be
given to the dominant feature for purposes of determining likelihood of confusion.”
TMEP § 1207.01(c)(ii) (citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) and Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 1570-71, 218 USPQ 390, 395 (Fed. Cir. 1983)). In assessing what constitutes
the dominant portion of a composite mark, greater weight is often given to the
wording, because it is the wording that purchasers would use to refer to or request
the goods or services. Viterra, 101 USPQ2d at 1911; In re Max Capital Grp. Ltd., 93
USPQ2d 1243, 1247 (TTAB 2010); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987). Nonetheless, composite marks, as with any marks, must be
considered in their entireties. See Jack Wolfskin, 116 USPQ2d at 1134; In re Shell
Oil Co., 26 USPQ2d at 1688; Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492
F.2d 1399, 1402, 181 USPQ 272, 273-74 (CCPA 1974).
Serial No. 87926954
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Applicant directs our attention to the differences in appearance and sound.
Applicant observes that the literal portion of the applied-for mark consists of three
words, whereas the cited mark includes only two words. Elaborating further on the
visual differences, Applicant points out that its mark “contains a rectangle to the
right above the word UNA,” with the word UNA displayed “in a distinctive technical,
futuristic typeface,” whereas the cited mark appears with “UNA in brown and
BIOLOGICALS in green” under “a distinctive green branch.”3 In Applicant’s view,
“the two marks have starkly different stylization and design elements, which,
together with the other distinguishing word components, serve to negate any
likelihood of confusion between them.”4
Applicant also disagrees with the Examining Attorney’s determination that UNA
is the dominant component of both marks, maintaining instead that the literal
portion of each mark constitutes a unitary phrase. With regard to its applied-for
mark, Applicant contends that PHYTOLOGY RANGE is “equally dominant” because
it “suggests an important characteristic of the Applicant’s products, namely, that they
relate to products derived from plants.”5 In Applicant’s view, consumers are unlikely
to use “UNA” alone in calling for the identified goods but instead are more apt to focus
on “THE PHYTOLOGY RANGE,” or variations thereof such as “THE PHYTOLOGY
SHAMPOO,” “THE PHYTOLOGY HAIR GEL.” Applicant further contends that due

3 Applicant’s Brief, p. 8; 4 TTABVUE 13.
4 Id. at 8-9; 4 TTABVUE 13-14.
5 Id. at 8; 4 TTABVUE 13.
Serial No. 87926954
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to the distinctions in wording, the marks project different meanings and commercial
impression. Applicant contrasts the meaning of “phytology” which is defined as “the
study of plants; botany”6 with “biologicals” which is defined as a “substance of
biological origin used as a drug, vaccine, pesticide, etc.”7
We agree with the Examining Attorney’s assessment that the word UNA, which
based on the record before us is arbitrary in relation to the identified goods, is the
dominant portion of both marks. Purchasers are inclined to focus on the first word in
a trademark; in both the applied-for and cited mark, UNA is the initial literal
element. See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“[It is] a matter of some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered.”);
see also, Palm Bay, 73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE
and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a
‘prominent feature’ as the first word in the mark and the first word to appear on the
label”).
Consumers conversant in Spanish will translate UNA as meaning “one,” which
could have a laudatory connotation i.e. referring to “number one.” Alternatively, such
consumers could perceive UNA as an arbitrary designation for the identified goods,
just as would other consumers. In either case, UNA will be perceived as the dominant

6 Entries for “phytology” from Wikitionary.com and The American Heritage Dictionary
(www.ahdictionary.com) attached to September 15, 2018 Office Action, pp. 2 and 8.
7 Entry from oxfordenglish.com submitted with March 15, 2019 Response to Office Action,
p. 27.
Serial No. 87926954
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element because it is large and prominent, and the wording that follows UNA in each
mark is either merely descriptive and properly disclaimed or highly suggestive of the
goods. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985)) (“Regarding descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.”); see also In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term
“CAFE,” is the dominant portion of the mark THE DELTA CAFE).
In addition, we are unpersuaded by Applicant’s argument that the literal portion
of each mark constitutes a unitary phrase with its own distinct meaning. “A phrase
qualifies as unitary in the trademark sense only if the whole is something more than
the sum of its parts.” TMEP § 1213.05(b) (citing Dena Corp. v. Belvedere Int’l, Inc.,
950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN
FORMULA and design for cosmetic products not unitary since the “elements are not
so merged together that they cannot be regarded as separate” and the proximity of
the words to the design feature “does not endow the whole with a single, integrated,
and distinct commercial impression”). “A unitary phrase derives its meaning when
viewed as a whole, with the combination of the components having a distinct
commercial impression that is independent of the constituent elements.” Id. (citing
Dena Corp., 21 USPQ2d at 1052 (noting that the proximity of the words EUROPEAN
FORMULA to the design feature “does not endow the whole with a single, integrated,
Serial No. 87926954
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and distinct commercial impression”). The record is devoid of evidence that
consumers would ascribe a particular meaning to UNA PHYTOLOGY RANGE or
UNA BIOLOGICALS, such that they would view this portion of the mark as a unitary
phrase with its own distinct meaning.
Likewise, the particular design elements in each mark are less likely to make an
impact on consumers. As noted above, when wording and a design comprise the mark,
then the wording is normally accorded greater weight because the wording is likely
to make an impression upon purchasers, would be remembered by them, and would
be used by them to request the goods. CBS, Inc. v. Morrow, 218 USPQ 198, 200 (Fed.
Cir. 1983) (“in a composite mark comprising a design and words, the verbal portion
of the mark is the one most likely to indicate the origin of the goods to which it is
affixed”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107USPQ2d 1424, 1430-31
(TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d at 1554. In Applicant’s mark,
UNA appears in a much larger stylized font size than the other wording in the mark.
Given its prominence, UNA dominates the smaller sized wording PHYTOLOGY
RANGE that follows underneath. The stylized rectangle to the left is of lesser
significance as well. In Registrant’s mark, UNA which appears in the center of the
mark in larger sized lettering above BIOLOGICALS, and therefore dominates as well.
The fern design element that appears above UNA, while of some prominence, merely
reinforces the notion that Registrant’s products are natural and possibly contain
ingredients derived from plants.
Serial No. 87926954
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Although we have pointed to the identical dominant portions of the marks, we
have considered the marks in their entireties. See Jack Wolfskin, 116 USPQ2d at
1134. Nevertheless, it is likely that consumers, when encountering Registrant’s
composite mark, will focus on the dominant literal portion, UNA, just as they would
focus on the dominant UNA portion in Applicant’s composite mark. The literal
distinctions in each mark, namely the merely descriptive and suggestive terms that
follow UNA that look and sound different, as well as the design features, are likely to
be overlooked when consumers consider the marks in their entireties.
Thus, when comparing the marks overall, they are similar in sound, and engender
a similar connotation and commercial impression. Consumers do not focus on minutia
but rather overall impressions. We find this DuPont factor weighs in favor of finding
a likelihood of confusion.
B. Strength of the Cited Mark
Applicant postulates that the term UNA is entitled to only a narrow scope of
protection. In support thereof, Applicant relies on two third-party registrations:
Registration No. 3508941 for the mark PER UNA (translated as “FOR ONE”) and
Registration No. 4745631 for the composite mark UNA SALVIA 4 and design, (UNA
SALVIA disclaimed) displayed below8

8 Registered June 2, 2015 on the Principal Register. The description of the mark is as follows:
“The mark consists of the design of a sage plant above the wording ‘UNA SALVIA 4’ in a
stylized font within a single-line rectangle with rounded corners.” Color is not claimed as a
feature of the mark.
Serial No. 87926954
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both for skin, body and hair care products in International Class 3.9
Third-party registrations alone may be relevant, in the manner of dictionary
definitions, “to prove that some segment of the [marks] has a normally understood
and well recognized descriptive or suggestive meaning, leading to the conclusion that
that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (internal quotation marks omitted).
See also Jack Wolfskin, 116 USPQ2d at 1136. In addition, “in determining the degree
of weakness, if any, in the shared terms, we must ‘adequately account for the
apparent force of [third-party use and registration] evidence,’ regardless of whether
‘specifics’ pertaining to the extent and impact of such use have been proven.” In re
Inn at St. John’s, 126 USPQ2d at 1746.

9 March 15, 2019 Response to Office Action, pp. 12, 15-16.
Serial No. 87926954
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Registration No. 3508941 for the mark PER UNA was cancelled10 on May 3, 2019
for failure to file a Section 71 affidavit or declaration showing use of the mark in
commerce in the United States. “The existence of a cancelled registration—
particularly one cancelled for failure to provide a declaration of continued use—does
not tend to show that the cited mark is weak due to third-party use.” In re Inn at St.
John’s, 126 USPQ2d at 1745. See also New Era Cap Co., Inc. v. Pro Era, LLC, 2020
USPQ2d 10596, 2020 BL 203555 (TTAB 2020). The literal component of the
remaining registration is similar in structure to the cited mark insofar as it
commences with the Spanish word UNA. It also shares a visually similar plant design
element. However, a single third-party registration falls short of the “voluminous”
evidence that would establish that UNA is so commonly registered in connection with
hair and skin care products that it is a conceptually weak term. See Juice
Generation, 115 USPQ2d at 1673 ; Jack Wolfskin, 116 USPQ2d at 1136 (discussing
“voluminous evidence” of registration and use of paw print design elements). See
also Inn at St. John’s, 126 USPQ2d at 1746 (where applicant presented no evidence
of third-party use, and at most, four third-party registrations of varying probative
value, including “two for non-identical terms,” found to be “a far cry from the large
quantum of evidence of third-party use and third-party registrations that was held to
be significant in both” Jack Wolfskin and Juice Generation). It also fails to show that

10 Because the mark was registered under the provisions of the Madrid Protocol, the technical
terminology is that the registered extension of protection to the United States was
invalidated. See TMEP § 1904.07.
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UNA has a particular meaning in the industry that might demonstrate the inherent
weakness of the UNA component as a source identifier.
Thus, on this record, Applicant has not shown that the UNA is weak in connection
with the identified goods or goods related thereto, making the cited mark deserving
a lesser scope of protection.
C. The Goods
Next, we compare the goods as they are identified in the involved application and
cited registration.11 See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1052 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput.
Servs. 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).
The goods need not be identical or even competitive to find a likelihood of confusion.
On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed.
Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir.
2000). They need only be “related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that the goods emanate from the same source.” Coach Servs., 101 USPQ2d at 1722

11 We disagree with the Examining Attorney’s determination that the goods are legally
identical. He bases this finding on the presumption that the goods identified as “cosmetics”
in the application encompass Registrant’s more narrowly identified “non-medicated skin care
and bath preparations.” 6 TTABVUE 11-12. We see nothing in the record to support this
determination.
Serial No. 87926954
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(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Evidence of relatedness may include news articles and/or evidence from computer
databases showing that the relevant goods are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or sold by the same manufacturer or dealer; and/or copies of prior use-based
registrations for both applicant’s goods and the goods listed in the cited registration.
See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and
agave related where evidence showed both were used for the same purpose in the
same recipes and thus consumers were likely to purchase the products at the same
time and in the same stores). Likelihood of confusion must be found as to the entire
class if there is likely to be confusion with respect to any service that comes within
the identification of services in that class. In re C.H. Hanson Co., 116 USPQ2d 1351,
1355 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981)).
Based on the identifications themselves, the involved goods fall under the general
category of personal care products. This however standing alone does not suffice to
show relatedness since there is no per se rule in this regard. To demonstrate that
Applicant’s and Registrant’s identified goods are related, the Examining Attorney
submitted evidence from business-to-consumer (B2C) websites demonstrating that it
is not uncommon for third-party entities to manufacture some items from both sets
of goods:
Aveda (https://www.aveda.com) offering hair care products
such as hair shampoo, hair conditioner and cosmetics
Serial No. 87926954
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(lipstick, concealer, pressed powder eye shadow, and
mascara) as well as body lotion and facial cream under the
Aveda mark.12
Avon (https://www.avon.com) offering cosmetics (blush, eye
liner, and lip gloss) as well as facial cream, body lotion, and
shower gel under the Avon mark.13
Borghese (https://www.borghese.com) offering cosmetics
(mascara, eye shadow, foundation and lip gloss) as well as
facial cream, body cream, body lotion, and shower gel under
the Borghese mark.14
Estee Lauder (https://www.esteelauder.com) offering
cosmetics (eye shadow, foundation and lipstick) as well as
facial cream, body cream, body lotion, and shower gel under
the Estee Lauder mark.15
Clarins (https://www.clarinsusa.com) offering hair
shampoo, hair conditioner and cosmetics (foundation and
lip gloss) as well as facial cream, body lotion, body oil,
shower gel, under the Clarins mark.16
This evidence shows that consumers may expect to find Applicant’s hair care products
and cosmetics and Registrant’s skin care and bath products as identified in the
involved application and cited registration as emanating from a common source under
a single brand name. While the evidence does involve house marks, it remains
probative to the extent that the house marks do not identify a wide variety of goods,
but rather are limited to the categories of hair, cosmetics, bath, and skin care
products. That is to say, the evidence is relevant inasmuch as it demonstrates that

12 See June 9, 2019 Office Action, pp. 2-24.
13 See id. at 25-33.
14 See id. at 35-47.
15 See id. at 47-82.
16 See id. at 107-124.
Serial No. 87926954
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both Applicant’s and Registrant’s identified goods may originate from the same
source.
The evidence also shows that Applicant’s and Registrant’s goods may be used
together as part of one’s hair and skin care regime and therefore constitute
complementary products. See Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509,
511 (TTAB 1984) (holding bath sponges and personal products, such as bath oil, soap,
and body lotion, to be related because they are complementary goods that are likely
to be purchased and used together by the same purchasers). Where the goods at issue
have complementary uses, and therefore are often used together or otherwise
purchased by the same purchasers for the same or related purposes, such goods have
generally been found to be sufficiently related such that confusion would be likely if
they are marketed under the same or similar marks. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (finding
bread and cheese to be related because they are often used in combination).
We therefore find that the goods are closely related and complementary in nature.
The issue is not whether purchasers would confuse the goods, but rather whether
there is a likelihood of confusion as to the source of these goods. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830,
832 (TTAB 1984). Accordingly, this DuPont factor also supports a finding of a
likelihood of confusion.
D. Trade Channels and Class of Consumers
We now consider the established, likely-to-continue channels of trade. Because
Serial No. 87926954
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the identifications in the application and cited registration have no restrictions on
channels of trade, we must presume that the goods travel in all channels of trade
appropriate for such goods. See In re Viterra Inc., 101 USPQ2d at 1908 (quoting
Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005). As the record shows,
the channels include online personal care product stores such as Ulta and Sephora
specializing in the sale of cosmetics, hair care and skin care products from a variety
of manufacturers.17 In addition, both Applicant’s and Registrant’s goods may be
encountered by the same prospective class of consumers, namely, members of the
general public seeking personal care products.
As such, the DuPont factor regarding the similarity or dissimilarity of
established, likely to continue trade channels and class of consumers also favors a
finding of likelihood of confusion.
E. Conditions of Purchase
Lastly, we examine the conditions under which the goods are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. Purchaser sophistication or degree
of care may tend to minimize likelihood of confusion. Conversely, impulse purchases
of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Applicant argues that consumers selecting personal care products are likely to

17 See excerpts from www.ulta.com and www.sephora.com attached to June 9, 2019 Office
Action pp. 83-106.
Serial No. 87926954
- 19 -
exercise a greater degree of care. In Applicant’s view,
The Examiner appears to miss Applicant’s point. It is not
that the purchasers of the parties’ respective products are
sophisticated or knowledgeable in a particular field. It is
the nature of the products, and their use in connection with
the customers’ physical appearance and health, that raise
the level of care that these customers exercise with respect
to their purchases.18
Applicant also contends that the involved goods tend to be relatively expensive and
subject to impulse buying.
Because neither Applicant’s nor Registrant’s identification limits the goods to a
particular price point, we must treat the goods as including both inexpensive as well
as high-end personal care products. See Stone Lion, 110 USPQ2d at 1161. The record
shows that contrary to Applicant’s assertion, cosmetics, skin care and hair care
products may be sold at relatively low price points. For example, Avon branded
cosmetics such as eyeliner retails for $2.99, lip gloss for $3.99, hair fragrance for $7.99
and shower gel for $2.99.19 “When products are relatively low-priced and subject to
impulse buying, the risk of likelihood of confusion is increased because purchasers of
such products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C.
Becton, 54 USPQ2d at 1899; Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748
F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984). See also L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1439 (TTAB 2012) (“Products such as opposer’s cosmetics and
personal care products … tend to be relatively inexpensive and may be the subjects

18 Applicant’s Brief, pp. 16-17; 4 TTABVUE 22-23.
19 January 9, 2019 Final Office, pp. 25-34.
Serial No. 87926954
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of impulse purchases). Moreover, even if we assume that the goods may not be an
impulse purchase, there insufficient evidence in the record to support a finding that
potential purchasers exercise a degree of care such that the conditions of sale would
weigh against a likelihood of confusion, given the absence of any restrictions in the
identifications. This DuPont factor of the conditions of sale also weighs in favor of a
finding of likelihood of confusion.
F. Balancing the Factors
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto. With similar marks and related goods marketed in
the same trade channels to the same category of consumers at potentially low price
points, consumers are not likely to understand that the goods emanate from different
sources. These findings lead us to the conclusion that prospective consumers are
likely to confuse the source of the involved goods.
Decision: The Section 2(d) refusal is affirmed.