Illuminaire Cosmetics, LLC

Trademark Trial and Appeal Board

Mar 25, 2008

No. 78774309 (T.T.A.B. Mar. 25, 2008)

Mailed: March 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Illuminare Cosmetics, LLC
________

Serial No. 78774309
_______

Scott W. Pink of DLA Piper US LLP for Illuminare Cosmetics,
LLC.

Mariam Aziz Mahmoudi, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Hairston, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Illuminare Cosmetics, LLC
to register on the Principal Register the mark shown below
for the following goods: “cosmetics, namely, foundations,
blushes, eye make-up and concealers” in International Class
3.1

1 Application Serial No. 78774309 was filed December 15, 2005,
based on applicant’s assertion of December 29, 2000 as the date
of first use of the mark in commerce. In addition, applicant
submits the following color statement: “color is not claimed as
a feature of the mark.”
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78774309
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark ILLUMINAIRE ENZYMATIC REVITALIZING MASK,
previously registered on the Principal Register in typed or
standard character form for “skin care preparations,
namely, beauty masks and peels” in International Class 3,2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal. In addition, applicant filed a reply
brief.
Evidentiary Matters
Before turning to the substantive ground for refusal,
we note that applicant has submitted an exhibit with its
main brief. This exhibit consists of a listing from
applicant’s Internet website of the locations at which
applicant offers its goods for sale. Applicant argues that
the listing is “illustrative” of evidence previously made

2 Registration No. 2638361 issued October 22, 2002 with a
disclaimer of “ENZYMATIC REVITALIZING MASK” apart from the mark
as shown.
Ser No. 78774309
3
of record with its December 21, 2006 response to the
examining attorney’s first Office action. We find,
however, that the materials comprising this exhibit have
not previously been made of record. Accordingly, we agree
with the examining attorney that this exhibit is untimely,
and it has not been considered. See Trademark Rule
2.142(d) (the record in the application should be complete
prior to the filing of an appeal). See also TBMP §1207.01
(2d ed. rev. 2004) and the authorities cited therein. We
note, however, that had we considered this exhibit in our
determination of the issue on appeal, the result would be
the same.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 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 goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
Ser No. 78774309
4
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Goods
Turning first to our consideration of the recited
goods, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the goods at issue be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient instead that the respective goods are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, the examining attorney has made of
record a number of use-based third-party registrations
which show that various entities have adopted a single mark
for goods that are identified in both applicant’s
application and the cited registration. See, for example:
Registration No. 3143407 for, inter alia,
concealer, facial masks and scrubs, foundations,
blushes;
Ser No. 78774309
5

Registration No. 3152908 for, inter alia, facial
masks, concealers, skin foundations;

Registration No. 3079264 for, inter alia, masks,
peels, blushes;

Registration No. 2727177 for, inter alia,
foundation makeup, eye makeup, facial peels,
masks;

Registration No. 3028108 for, inter alia, light
peels, foundation, concealers; and

Registration No. 2944900 for, inter alia,
foundation, blush, beauty masks, concealers for
skin and face, eye makeup.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). In this case, the evidence of record supports a
finding that the same marks are used to identify both
applicant’s goods and those of registrant. This evidence
demonstrates the related nature of the goods at issue, and
this du Pont factor favors a finding of likelihood of
confusion.
Channels of Trade
Furthermore, it is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
Ser No. 78774309
6
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) In this case, there
are no restrictions in either applicant’s or registrant’s
recitation of goods as to the channels of trade in which
the goods may be encountered, or type or class of customer
to which the goods are marketed. Thus, both applicant’s
and registrant’s goods are presumed to move in all normal
channels of trade and be available to all classes of
potential consumers, including consumers of each others’
goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).

Ser No. 78774309
7
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall 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 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.
In this case, applicant’s mark,

is highly similar to registrant’s mark, ILLUMINAIRE
ENZYMATIC REVITALIZING MASK, in that applicant’s mark is
nearly identical in appearance to the most distinctive and
dominant feature, namely, “ILLUMINAIRE,” of the mark in the
cited registration. It is a well-established principle
that, in articulating reasons for reaching a conclusion on
Ser No. 78774309
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the issue of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The significance of “ILLUMINAIRE” in registrant’s mark
is reinforced by its location as the first word in the
mark. See Presto Products Inc. v. Nice-Pak Products, Inc.,
9 USPQ2d 1895, 1897) TTAB 1988)(“it is often the first part
of a mark which is most likely to be impressed in the mind
of a purchaser and remembered”). See also Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)(upon encountering the
marks, consumers must first notice the identical lead
word). Further, in registrant’s mark, the wording
“ENZYMATIC REVITALIZING MASK” is disclaimed, and that
wording at best is highly descriptive of registrant’s goods
and, as such, is subordinate to “ILLUMINAIRE.” Thus,
“ILLUMINAIRE,” being the first word of registrant’s mark,
as well as the only portion thereof that is not disclaimed,
is the dominant portion thereof, and the portion that is
most likely to be remembered by purchasers.
Ser No. 78774309
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As noted above, the dominant portion of the mark in
the cited registration is nearly identical in appearance to
applicant’s mark. As to sound, it is settled that there is
no correct way to pronounce a trademark. See In re
Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) and
Interlego AG v. Abrams/Gentile Entertainment Inc., 63
USPQ2d 1862 (TTAB 2002). See also In re Microsoft Corp.,
68 USPQ2d 1195 (TTAB 2003) (it is not possible to control
how consumers will vocalize marks). Nonetheless, we find
that because applicant’s mark and the “ILLUMINAIRE” portion
of registrant’s mark are nearly identical in appearance and
spelling, there is no reason why the marks would not be
highly similar, if not identical, in pronunciation. See In
re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217 (TTAB 2001). Thus, when taken as a whole, the marks
are highly similar in sound. Furthermore, while the
examining attorney and applicant have argued and introduced
conflicting evidence regarding possible meanings of the
marks, it is clear that both marks convey a sense of
illumination resulting from the use of the products
identified thereby. Thus, the marks are highly similar in
connotations and convey highly similar overall commercial
impressions.
Ser No. 78774309
10
Applicant contends that the mark in the cited
registration is weak and thus entitled to a narrow scope of
protection. In support of its argument, applicant has made
of record copies of third-party registrations taken from
the United States Patent and Trademark Office’s Trademark
Applications and Registrations Retrieval (TARR) database of
several “ILLUMIN” formative marks for various cosmetics.
We note, however, that the marks in these registrations are
not as similar to either applicant’s or registrant’s marks
as those marks are to each other. In addition, these
third-party registrations do not prove that the marks are
in use or that the public is familiar with them. See The
Conde Naste Publications, Inc. v. Miss Quality, Inc., 507
F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975). Thus, they
are of limited probative value as to the asserted weakness
of registrant’s mark.
On balance, we find that consumers who are familiar
with the mark, ILLUMINAIRE ENZYMATIC REVITALIZING MASK,
used in connection with registrant’s “skin care
preparations, namely, beauty masks and peels,” who then see
applicant’s mark used in connection with “cosmetics,
namely, foundations, blushes, eye make-up and concealers,”
are likely to assume that the owner of registrant’s mark
has adopted that of applicant when using the mark in
Ser No. 78774309
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connection with cosmetics. In other words, consumers are
likely to view both marks as variations of each other, and
therefore as indicators of a single source. Thus, despite
the difference in appearance and the presence in
registrant’s mark of the wording “ENZYMATIC REVITALIZING
MASK,” the marks, when viewed as a whole, are highly
similar in appearance, pronunciation, connotation and
commercial impression. Accordingly, this du Pont factor
also favors a finding of likelihood of confusion.
Conditions of Sale
Another du Pont factor discussed by applicant and the
examining attorney is that of the conditions of sale.
Applicant asserts that its goods are purchased by careful
and sophisticated consumers. However, there is no evidence
that either applicant’s or registrant’s goods are limited
to purchase or use only by highly sophisticated persons.
In the absence of any restrictions in the respective
identifications of goods as to the classes of purchasers,
we must presume that the goods of applicant and registrant
may be purchased by all the usual classes of purchasers,
including ordinary consumers. In addition, even
sophisticated purchasers are not necessarily knowledgeable
in the field of trademarks or immune from source confusion.
See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
Ser No. 78774309
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Actual Confusion
Applicant also argues that there is no evidence of any
actual confusion and that there has been concurrent use for
seven years. We do not accord significant weight to
applicant’s contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal
Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic’s
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant’s
corporate president’s unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
Ser No. 78774309
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conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
Finally, to the extent that we have doubt, we have
resolved our doubt, as we must, in favor of the prior
registrant and against applicant. See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v. Audio
Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB
2004). It is well established that one who adopts a mark
similar to the mark of another for the same or closely
related goods or services does so at his own peril. See J
& J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988);
and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc.,
190 USPQ 308 (TTAB 1976).
Decision: The refusal of registration is affirmed.