Int’l. Cosmetics Manu-facturer, Inc.

Trademark Trial and Appeal Board

Sep 28, 2000

No. 75350146 (T.T.A.B. Sep. 28, 2000)

Paper No. 15
TEH
09/29/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Cosmetics Manufacturer, Inc.
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Serial No. 75/350,146
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Herbert Dubno of Karl F. Ross P.C. for International Cosmetics
Manufacturer, Inc.
J. Matthew Gowdy, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney)
_______
Before Seeherman, Hanak and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
International Cosmetics Manufacturer, Inc. has appealed from
the final refusal of the Trademark Examining Attorney to register
the mark shown below for goods which were subsequently amended to
read, "cosmetics, namely, nail polish, nail polish remover, eye
liner, mascara, eye shadow, lip pencil, lip liner, lipstick, face
powder, face makeup and blush."1

1 Application Serial No. 75/350,146, filed September 2, 1997, alleging
dates of first use on August 26, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/350,146
2
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the following registered mark for "cologne, body lotion, shower
gel" as to be likely to cause confusion."2
When the refusal was made final, applicant appealed. Briefs
have been filed, but an oral hearing was not requested.3
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or

2 Registration No. 2,127,210; issued January 6, 1998.
3 The application was assigned to a different Examining Attorney for
the appeal brief.
Ser No. 75/350,146
3
services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976) and In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Turning first to the goods, the Examining Attorney argues
that applicant's cosmetics products and registrant's cologne,
body lotion and shower gel are all related, pointing out that the
products are marketed together and are often sold by the same
source. In support thereof, the Examining Attorney has made of
record copies of thirty third-party registrations covering both
types of goods under the same marks. The Examining Attorney
maintains that although consumers "might take care in choosing
makeup for their faces" they are not "sophisticated or
knowledgeable in the field of trademarks" or immune from source
confusion.
Applicant, on the other hand, argues that its own goods are
"not the same" as those of registrant, that cosmetic products
"remain visible in use" whereas those in the registration "are
recognizable by smell" and are not visible once they have been
applied. Applicant also contends that the respective products,
and particularly the cosmetics, are purchased by "a very
discerning public" and selected "with a measure of significant
care." Applicant maintains that the third-party registrations
are not "evidence of a likelihood of confusion in the
marketplace" because the registrations fail to take into account
Ser No. 75/350,146
4
situations where there is a difference in the marks and the care
used in purchasing the goods.
It is true that there are specific differences in the
respective products. They do not have identical properties and
they are not interchangeable. However, the question is not
whether purchasers can differentiate the goods themselves but
rather whether purchasers are likely to confuse the source of the
goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Thus, it is not necessary that the
goods of the applicant and registrant be similar or even
competitive to support a finding of likelihood of confusion. It
is sufficient if the respective goods are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
We find that applicant's cosmetic products on the one hand,
and registrant’s cologne, body lotion and shower gel on the other
are all related products. Notwithstanding the different product
characteristics, they all constitute preparations which are
typically used as part of an everyday beauty or personal grooming
regimen to enhance physical appeal, and they would all be sold in
Ser No. 75/350,146
5
the same channels of trade to the same classes of customers.
Moreover, the thirty third-party registrations show, in each
instance, a mark which is registered for both cosmetic products
and one or more of registrant's products. Although the third-
party registrations are not evidence of use of the marks in
commerce, the registrations have probative value to the extent
that they suggest that the identified goods are of a type which
may emanate from a single source.4 See, e.g., In re Albert
Trostel & Sons Co., supra at 1785-1786; and In re Mucky Duck
Mustard Co., 6 USPQ2d 1467 (TTAB 1988). It is clear that
consumers would be likely to believe that cosmetic products, and
cologne, body lotion and shower gel, if sold under similar marks,
emanate from or are sponsored by the same source if such goods
are sold under the same or similar marks.
Moreover, all of these items are relatively inexpensive and
therefore are likely to be purchased casually and on impulse,
thus increasing the risk of confusion. Kimberly-Clark Corp. v.
H. Douglas Enter., Ltd., 774 F.2d 1144, 1146, 227 USPQ 541, 542
(Fed. Cir. 1985). Applicant’s argument that the identified
products, and in particular its own products, are purchased by a
"discerning" public is unsupported by the record. In reality,
both applicant’s cosmetics and registrant’s cologne, body lotion

4 We note that only three of these registrations involve house marks
for broad or diverse categories of goods.
Ser No. 75/350,146
6
and shower gel would be purchased by customers of all types
including members of the general public. While some of these
consumers may care about the products they are purchasing or
exercise a certain degree of care in selecting these products,
they are not necessarily sophisticated purchasers or likely to
exercise a high degree of care in terms of examining the
trademarks.
Thus, we turn our attention to the marks. The Examining
Attorney argues in this regard that the marks could be pronounced
the same, that they contain similar visual elements, and that
they create similar commercial impressions. The Examining
Attorney points out that registrant’s mark is the Spanish word
for "tea," an arbitrary word in relation to the respective goods,
and maintains that applicant’s mark suggests the English word
"tea."
Applicant argues that the overall appearance of the marks is
"vastly different" and is particularly distinguished by the
vertical versus horizontal presentation of the marks, the fonts
of the marks, the number of letters in the marks, and the
location and orientation of the accents in each mark. Applicant
argues that its mark is neither an English nor foreign word in
view of the appearance of the accent mark and applicant maintains
that because the marks are "unusual," the consumer would note
even the slightest differences in the marks.
Ser No. 75/350,146
7
The respective marks are similar in meaning, and create
similar commercial impressions. Under the doctrine of "foreign
equivalents" foreign words from common languages are translated
into English in order to determine their confusing similarity to
English word marks. In re Ithaca Industries, Inc., 230 USPQ 702
(TTAB 1986). In this case, applicant does not dispute that the
term TÉ in registrant's mark is the Spanish word for "tea."
Applicant instead argues that its own mark, which includes an
accent over the letter "E," has no meaning in any language. For
that very reason, however, purchasers would attach no strong
significance to the accent in applicant’s mark. There is no
evidence that applicant’s mark would be perceived by the average
purchaser as anything other than the dictionary word "tea." The
accent may perhaps lend a certain European flair to the mark, but
it does not significantly affect the commercial impression of the
mark or the English language meaning the mark conveys,
particularly since the word "tea" with an accent mark has no
known meaning in any other language.5

5 Applicant, in its initial brief, admitted that its mark suggests the
word "tea" stating "[o]f course it does have some suggestiveness not
only of the English word "tea" but also of the registered mark which is
its Spanish equivalent...." Applicant later changed its position in
its reply brief to claim that "there is no basis for the Examining
Attorney's statement that Applicant's mark would suggest to the
ordinary skilled consumer a beverage when applied in the form shown in
the application on Applicant's goods."
Ser No. 75/350,146
8
There is also no dispute that "tea" is a unique and
arbitrary term in relation to the products offered under the
respective marks. Contrary to applicant’s contention, however,
this is a factor which not only broadens the scope of the
registered mark's protection, but increases the likelihood that
the marks, when used in connection with the identified products
would be confused. See Jockey International Inc. v. Butler, 3
USPQ2d 1607 (TTAB 1987).
The marks are also visually similar. While there is an
additional letter in applicant's mark, both marks are short, one-
syllable words beginning with the letters "TE" and both marks
contain an accent mark over the second letter "E." Applicant
strains to differentiate the marks based on the position of the
accents over the letters in each mark as follows:
...the location and orientation of the accent practically at
the junction between the first and second letters and at the
junction between the vertical shaft of the first letter and
the convex top of the second contributes a dominant feature
in [applicant's] mark...
To the extent that there are any differences in the
"orientation" of the accents, such differences are so slight as
to be perceptually meaningless and would hardly be recognized by
the purchasing public. In fact, the presence of the accent, if
anything, enhances the resemblance of the cited mark to
applicant's mark. Both marks are also displayed in a similar
Ser No. 75/350,146
9
stylized typeface, with the first upper-case letter "T" in each
mark followed by letters in lower-case form. Moreover, consumers
of applicant’s products would attribute a commercial, rather than
any source-identifying significance, to the vertical display of
applicant's mark. The thin or narrow shape of products such as
eyeliner, lip pencil, lip liner and mascara dictates the
placement of the mark on those products, making it practical to
display the mark in a vertical manner along the goods so that the
entire mark might be visible to the consumer without having to
shift or turn the product.
The point is that while there are some visual differences in
the marks, these differences are not likely to be recalled by
purchasers seeing the marks at separate times. Under actual
marketing conditions, consumers do not necessarily have the
opportunity to make side-by-side comparisons between marks.
Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
Thus, one who is familiar with applicant's mark TÉA, upon seeing
registrant's mark TÉ, the Spanish word for "tea," is likely to
remember the marks as being the same.
Finally, the marks are similar in sound, whether the marks
are properly pronounced or not, and whether purchasers are
familiar with the Spanish language or not. Those purchasers who
are knowledgeable in Spanish may be inclined, because of the
accent in applicant's mark, to pronounce applicant’s mark TÉA in
Ser No. 75/350,146
10
the same manner as the Spanish word "TÉ." Those who are not
familiar with Spanish may be likely to ignore the accents
altogether and pronounce both marks as the English word "tea."
We conclude from the foregoing that consumers familiar with
registrant’s perfumes and body lotions sold under its mark TÉ
would be likely to believe upon encountering applicant’s mark TÉA
for cosmetic products, that the goods originated with or are
somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
E. J. Seeherman
E. W. Hanak
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board