Juvia’s Holdings LLC

Trademark Trial and Appeal Board

Sep 13, 2019

87588623 (T.T.A.B. Sep. 13, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Juvia’s Holdings LLC
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Serial No. 87588623
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Michael K. Fretwell and Lawrence E. Laubscher Jr. of Laubscher & Laubscher PC,
for Juvia’s Holdings LLC.
Susan K. Lawrence, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Taylor, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Juvia’s Holdings LLC (“Applicant”) seeks registration on the Principal Register of
the mark THE MASQUERADE BY JUVIA’S (in standard character format) for, as
amended, “Cosmetics, namely, make-up for beautification” in International Class 3.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it

1 Application Serial No. 87588623 was filed on August 29, 2017, based upon Applicant’s
assertion of first use of the mark anywhere and in commerce as of August 2016, under Section
1(a) of the Trademark Act, 15 U.S.C § 1051(a).
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is likely to cause confusion with the mark in Registration No. 4349967,2
MASKERAIDE (in standard characters) for, inter alia, “Cosmetic preparations for
skin care; Facial beauty masks; Facial masks” in International Class 3.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. Both Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.4
I. Evidentiary Objection
The Examining Attorney has objected to images of Applicant’s and Registrant’s
product packaging, included for the first time on pages 5 and 7, respectively, of
Applicant’s brief,5 arguing that these images were not previously made of record and
accordingly are untimely.6 We sustain the objection to this new evidence, as
Trademark Rule 2.142(d) provides that the record “should be complete prior to the
filing of an appeal.” 37 C.F.R. § 142(d). See In re Midwest Gaming & Entm’t LLC, 106

2 Issued June 11, 2013; Section 8 declaration accepted.
3 The Examining Attorney also refused registration under Section 2(d) of the Trademark Act
in view of Registration Nos. 5260666 and 5260671 and cited prior pending application Serial
No. 87200027 as a potential bar to registration. The registrations and application were
assigned to Applicant, and the refusals and potential refusal were obviated. Registration was
also refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, because the
specimen was illegible, but the refusal was subsequently withdrawn after an acceptable
specimen was made of record.
4 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.
5 8 TTABVUE 6 and 8.
6 We note that with its March 13, 2018 Response, Applicant properly made of record different
images of Registrant’s product packaging. See TSDR 11-12.
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USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence submitted with brief is “untimely
and therefore not part of the record for this case”). Accordingly, we give no further
consideration to these untimely images or any arguments based solely on them.7
II. Likelihood of Confusion
A. Applicable Law
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors 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 (CCPA 1976). We discuss below these and other relevant factors. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006) (even within du Pont list, only factors that are “relevant and of record” need be
considered).
B. Relatedness of the Goods, Channels of Trade and Classes of Consumers

7 The proper method for an applicant to introduce additional evidence is to request suspension
of the proceeding and remand of the application for further examination. See Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d).
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We first turn to a comparison of the goods under the second du Pont factor. In
making our determination regarding the relatedness of the goods, we must look to
the goods as identified in Applicant’s application and the cited registration. See In re
Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). It is
well settled that the goods of Registrant and Applicant need not be identical or
competitive, or even be offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient 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 source. See Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d. 1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012);
Hilson Research, Inc. v. Soc’y for Human Resource Mgmt., 27 USPQ2d 1423 (TTAB
1993). The issue here, of course, 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 (TTAB 1984).
Applicant’s goods are identified as “cosmetics, namely, make-up for beautification”
and Registrant’s goods are identified as “cosmetic preparations for skin care; facial
beauty masks; [and] facial masks.” The Examining Attorney maintains that based on
the wording of each identification, the goods are highly related, all being
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cosmetic/beauty products. To support the relatedness of the goods, the Examining
Attorney made of record various definitions of the word “cosmetic,” including:
• substances that you use on your skin to make yourself look more attractive
(www.macmillandictionary.com)8

• noun
1. a powder, lotion, lipstick, rouge or other preparation for beautifying the
face, skin, hair, nails, etc.
2. cosmetics, superficial measures to make something appear better, more
attractive, or more impressive ….
adjective
3. serving to beautify; imparting or improving beauty, especially of the
face.
4. used or done superficially to make something look better, more
attractive, or more impressive ….
(www.dictionary.com)9
The Examining Attorney also made of record web pages from the websites of
CLINIQUE (www.clinique.com),10 NEUTROGENA (www.neutrogena.com),11
L’ORÉAL (www.lorealparisusa.com),12 LANCÔME (www.lancome-usa.com)13, and
SHISEIDO (www.shiseido.com)14 showing that a single entity provides both make-up
and skin care items, including facial masks, under the same mark.15

8 April 18, 2018 Final Office Action, TSDR 12.
9 Id. at TSDR 13.
10 November 9, 2018 Denial of Request for Reconsideration, TSDR 4-6.
11 Id. at TSDR 7-9.
12 Id. at TSDR 10-14.
13 Id. at TSDR 15-17.
14 Id. at TSDR 18-20.
15 September 13, 2017 Office Action, TSDR 6-14.
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We find this evidence sufficiently demonstrates that Applicant’s make-up for
beautification is closely related to Registrant’s cosmetic preparations for skin care,
facial beauty masks, and facial masks, such goods all being cosmetic items that may
be used together in a beauty regimen. Moreover, the evidence shows that both make-
up and cosmetic preparations, including facial masks, are often sold by the same
entity under the same mark.
While acknowledging that both Registrant’s and its own goods are categorized as
cosmetics and are “used to improve the look of a person,” Applicant asserts that the
products themselves, as described in excerpts from Encyclopaedia Britannica and
Wikipedia, are very different.16 While that may be so, as noted, the respective goods
need only be related in some way or the marketing conditions and activities be such
that consumers would mistakenly believe that the goods originate with a common
source. Coach Servs., 101 USPQ2d at 1723. Notably, the excerpts relied upon by
Applicant corroborate our finding that cosmetics in the nature of both makeup and
skin care preparations are related and complementary in that they are used together
for, inter alia, beautifying one’s appearance.
Considering the third du Pont factor, because there are no limitations or
restrictions in Applicant’s or Registrant’s identification of goods, we must presume
that their respective goods are marketed in all normal trade channels for those goods,
such as on-line, and to all normal classes of purchasers for such goods, including

16 Applicant’s brief p. 12-13, 8 TTABVUE 13-14; Request for Reconsideration, TSDR 14-43.
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ordinary purchasers. In re Elbaum, 211 USPQ 639 (TTAB 1981). As a result, the
channels of trade and classes of purchasers, at a minimum, overlap.
The du Pont factors of the relatedness of the goods, channels of trade and classes
of purchasers favor a finding of likelihood of confusion.
C. Similarity/Dissimilarity of the Marks
We now consider the first du Pont likelihood of confusion factor of the similarity
or dissimilarity of the marks in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
In comparing the marks, we are mindful that “[t]he 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.” Coach Servs., 101
USPQ2d at 1721; see also San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. L’Oreal v. Marcon, 102 USPQ2d at
1438; Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here,
the average customers include members of the general public seeking cosmetic
products.
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Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal
Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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. In re Nat’l Data Corp., 224 USPQ at
751.
Although we must compare Applicant’s mark THE MASQUERADE BY JUVIA’S
and the cited mark MASKERAIDE in their entireties, we find, contrary to Applicant’s
contention, the term MASQUERADE to be the dominant portion of Applicant’s mark.
The dominance of the word MASQUERADE in Applicant’s mark is reinforced by its
position as the first distinctive part of the mark. The Board has often held that it is
the first part of a mark which is most likely to be impressed upon the mind of the
consumer and remembered. See e.g., Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988). The definite article “THE” at the beginning of
Serial No. 87588623
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Applicant’s mark has no trademark significance and fails to distinguish it from the
cited mark. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (“The
addition of the word ‘The’ at the beginning of the registered mark does not have any
trademark significance.”); In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005)
(definite article THE is a non-distinctive term that adds no source-indicating
significance to the mark as a whole); In re Narwood Prods., Inc., 223 USPQ 1034,
1034 (TTAB 1984) (noting the insignificance of the word “the” in comparison of THE
MUSIC MAKERS and MUSICMAKERS).
Nor does the addition of the wording “BY JUVIA’S” distinguish the marks.
Applicant acknowledges that its use of “BY JUVIA’S” is intended to create a “house
mark,” and that this house mark “is included in many of Juvia Holding’s [Applicant’s]
trademarks to identify source and build a consistent brand across many of the Juvia’s
Place products.” Applicant’s brief p. 7.17 While, as Applicant notes, there is no specific
rule as to whether the use of a house mark will render an otherwise confusingly
similar mark distinctive, see In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1366-67
(TTAB 2007), in general, the use of a house mark does not obviate confusion.18 In re

17 8 TTABVUE 8. To the extent Applicant is attempting to assert rights in a family of BY
JUVIA- formative marks, the family of marks doctrine is not available to an applicant
seeking to overcome a likelihood of confusion refusal in an ex parte proceeding. The focus
must be on the mark Applicant seeks to register, not other marks Applicant may have used
or registered. In re Cynosure Inc., 90 USPQ2d 1644, 1645 (TTAB 2009).
18 Applicant discussed various decisions in which a house mark was found to overcome the
similarities between the marks. The Examining Attorney adequately distinguished these
cases, and we adopt her reasoning. See 10 TTABVUE 15-16. More importantly, while our
decision is made within the confines of established statutes, rules and case precedent, it is
axiomatic that each case must be decided on its own facts. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Serial No. 87588623
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Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2012). See also,
e.g., In re Chica Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (CORAZON and
CORAZON BY CHICA); Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762, 1764 (TTAB
1987) (FOLIO and FOLIO BY FIRE ISLANDER). “The exceptions to this general rule
are where 1) the marks in their entireties convey significantly different commercial
impressions, or 2) the matter common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely descriptive or diluted.” Gen.
Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1602 (TTAB 2011).
Neither of these exceptions apply here since, as discussed below, the marks convey
the same or very similar commercial impressions, and the word MASQUERADE, or
its novel spelling, MASKERAIDE, has not been shown to be merely descriptive or
diluted.
Applicant argues the different spellings of the words “masquerade” and
“maskeraide” create different connotations. Applicant particularly contends that
Registrant’s mark is “a portmanteau of the works MASKER (or just MASK) and AID”
and that use of the combination MASKER or MASK with AID “is meant to be
suggestive of the goods: a mask that is an aid for skin care,”19 while the term in its
mark, spelled MASQUERADE and defined as “a costume party at which masks are
worn,”20 calls to mind “a disguise or a masquerade ball.”21 We find this argument

19 8 TTABVUE 5.
20 April 18, 2018 Final Office Action, TSDR 9.
21 8 TTABVUE 6.
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unavailing. Applicant points to images of Registrant’s packaging that are not
properly of record as support for the asserted connotation of Registrant’s mark. To
the extent that similar packaging images are properly of record, we note that in
contrast to an infringement action where the court examines the visual appearance
of the marks in the context of actual use, in proceedings before the Board, only the
drawing of the mark is relevant. See Detroit Athletic, 128 USPQ2d at 1052; In re
Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001) (“in Board
proceedings, likelihood of confusion is determined independent of the context of
actual usage”). Here, Registrant’s mark is registered in standard characters and, as
such, the mark is not limited to the presentation on the images of product packaging
in the record. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir.
2012) (the display of standard character marks is not limited to any particular font
style, size, or color). Moreover, as pointed out by the Examining Attorney, even if
consumers recognize the term “masker” as a component of Registrant’s mark, it is
defined as “one who wears a mask, especially a participant in a masquerade or
masque.”22 When the terms MASQUERADE and MASKERAIDE are viewed in
relation to the respective goods, it is highly likely that they convey very similar
commercial impressions, i.e., that of a costumed party where one wears a mask or a
participant in the party – in this case masking or disguising with either make-up for
beautification or skin preparations and facial beauty masks.

22 April 18, 2018 Final Office Action, TSDR 6.
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Moreover, although there is no correct pronunciation of these terms because it is
impossible to predict how the public will pronounce a particular mark, Embarcadero
Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013), the term
MASQUERADE in Applicant’s mark and the term MASKERAIDE, the whole of
Registrant’s mark, could be pronounced virtually the same; such similarity in sound
alone may be sufficient to support a finding that the marks are confusingly similar.
In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1586 (TTAB 2007); In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
Despite Applicant’s arguments to the contrary, the record does not establish that
the terms MASQUERADE or MASKERAIDE are descriptive or diluted. There is no
evidence of third-party use or registration of either term. Cf. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least fourteen relevant third-
party uses or registrations of record); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (at least twenty-six relevant
third-party uses or registrations of record); see also, In re Broadway Chicken Inc., 38
USPQ2d 1559 (TTAB 1996) (“Broadway” is weak for restaurant services based on
evidence that hundreds of restaurants and eating establishments use Broadway as a
trademark or trade name).
If we consider Registrant’s mark MASKERAIDE to be a play on the words “mask”
and “aid,” it still is only somewhat suggestive of Registrant’s goods. In any event, and
particularly given the absence of evidence showing third-party use or registration of
Serial No. 87588623
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that term in connection with skin care preparation and facial beauty masks, we must
accept that even weak marks are entitled to protection. See In re Max Capital Group,
93 USPQ2d 1243, 1246 (TTAB 2010).
When the marks are compared in their entireties, Applicant’s mark THE
MASQERADE BY JUVIA’S and the cited mark are similar in appearance, sound,
connotation and commercial impression due to the shared phonetically equivalent
terms MASQUERADE and MASKERAIDE. Moreover, and as acknowledged by
Applicant, both marks are in standard characters. As such, their display is not limited
to any particular font style, size, or color. See In re Viterra, 101 USPQ2d at 1909-10;
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
(Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1886 (TTAB
2018) (literal elements of standard character marks may be presented in any font
style, size or color). We therefore must consider that they may be displayed in the
same or similar lettering style or color.
In sum, in comparing the two mark in their entireties, we have taken into account
the differences in appearance and sound between them. We nonetheless find that
despite these differences, the marks are more similar than dissimilar in appearance,
sound, meaning and commercial impression. Because of these similarities,
purchasers may well believe that the two marks are simply variants of one another,
used by a single producer to identify and distinguish companion lines of products.
The factor of the similarity of the marks thus favors a finding of likelihood of
confusion.
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D. Conclusion
When we consider the record, the relevant likelihood of confusion factors, and all
of the arguments and evidence relating thereto, we find the marks are sufficiently
similar for confusion to be likely when used in connection with related and
complementary goods in overlapping trade channels. We thus conclude that
prospective purchasers familiar with the registered mark MASKERAIDE for
“cosmetic preparations for skin care; facial beauty masks; [and] facial masks” would
be likely to believe, upon encountering Applicant’s similar mark THE
MASQUERADE BY JUVIA’S for “cosmetics, namely, make-up for beatification,” that
such goods emanate from, or are sponsored by or affiliated with, the same source.
Decision: The refusal to register Applicant’s mark THE MASQUERADE BY
JUVIA’S under Section 2(d) is affirmed.