La Femme Cosmetics, Inc.

Trademark Trial and Appeal Board

Mar 19, 2001

No. 75656217 (T.T.A.B. Mar. 19, 2001)

03/19/01
Paper No. 9
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re La Femme Cosmetics, Inc.
________
Serial No. 75/656,217
_______
Michael a. Painter of Isaacman, Kaufman & Painter for La Femme
Cosmetics, Inc.
William P. Jacobi, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Walters, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
La Femme Cosmetics, Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register the mark shown
below for goods which were amended to read:
Cosmetics, namely, skin cleansing lotion, concealer, cuticle
remover preparation, eye shadow, eye liner, eyebrow pencil,
facial scrub, false eyelashes and adhesive therefor, hand
and body lotion, lipstick, lip gloss, lip liner, liquid and
cream foundation, loose and pressed powder, facial masques,
skin moisturizing lotion, nail decals, nail polish, nail
polish remover, replenishing cream, rouge and toner.1
1 Application Serial No. 75/656,217, filed March 8, 1999 alleging dates
of first use and first use in commerce of August, 1957.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/656,217
2
The application includes an English translation of "LA FEMME" as
"the woman" or "the wife."
The 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 mark
FEMME in typed form for "cosmetic and toilet preparations;
namely, perfume and cologne"2 as to be likely to cause confusion.3
The cited registration contains a translation of FEMME as "woman,
mature woman, married woman, wife, female attendant, lady."
Applicant has appealed. Briefs have been filed, but an oral
hearing was not requested. We affirm.
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. 1,825,704; issued March 8, 1994; Sections 8 and 15
affidavits accepted and acknowledged, respectively.
3 The Examining Attorney had initially refused registration also under
Section 2(e)(1) of the Act. That refusal was subsequently withdrawn.
Ser. No. 75/656,217
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 and registrant's perfume and cologne
are closely related products, and that they move through the same
channels of trade to the same purchasers. In support of his
position, the Examining Attorney has made of record copies of
eight third-party registrations covering both types of products
under the same marks. Applicant, on the other hand, argues that
perfume and cologne, products which affect scent or odor, are
different from "cosmetic products," which affect appearance.
Applicant maintains that the respective products, channels of
trade, and users are "totally divergent" and that "when tested
against the standard of association or 'complementary use' there
is no relationship between 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
Ser. No. 75/656,217
4
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).
Applicant's cosmetic products on the one hand, and
registrant’s perfume and cologne, on the other, are all related
products. Indeed, the complementary nature of these products is
obvious. Notwithstanding the different product characteristics,
they all constitute preparations which are typically used as part
of an everyday beauty or personal grooming regimen and, as
neither the application nor registration contains any limitations
as to channels of trade or class of purchasers, we assume that
these products travel through the usual trade channels to the
general consumer. Moreover, the third-party registrations show,
in each instance, a mark which is registered for both
registrant's products, perfume and cologne, and one or more of
applicant's products.4 Although the third-party registrations
are not evidence of use of the marks in commerce, the
4 We note that none of these registrations involve house marks for
broad or diverse categories of goods.
Ser. No. 75/656,217
5
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. 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). We also note that all of the broadly
identified goods herein encompass items that may be relatively
inexpensive and therefore 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). See also, e.g., Mary Kay Cosmetics,
Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973)
[wherein the Board noted that perfumes are available to the
general public in stores which cater to those of expensive tastes
and in drug stores which cater to persons of all tastes].
It is clear that consumers would be likely to believe that
cosmetic products, and perfume and cologne emanate from or are
sponsored by the same source if such goods are sold under the
same or similar marks.5
5 The Examining Attorney also points out that the Board, in at least
two published cases, has found that the use of same or similar marks in
connection with these types of products would be likely to cause
confusion. See Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd.,
supra and Capri Cosmetics, Inc. v. Nina Ricci S.A.R.L., 142 USPQ 361
(TTAB 1964).
Ser. No. 75/656,217
6
Thus, we turn our attention to the marks. Applicant argues
that the marks, when considered in their entireties, are
distinguishable because "[t]he words 'LA FEMME' and the specific
stylized form are integral parts of [applicant's] composite mark"
and create a different commercial impression from registrant's
mark. Applicant maintains that registrant's mark "is weak" and
conveys "a different appearance and meaning from [applicant's]
mark." In this regard, applicant notes that "[a]lthough the word
FEMME may have originally been translated from the French
language, it is defined in the English dictionary" and appears to
argue that "femme" is a common English word and as used in the
registration merely conveys its common meaning.6 Applicant has
requested that the Board take judicial notice of an English
dictionary showing that "femme" is an English word. However, no
definition for the word has been provided. Nevertheless, for
purposes of this decision, we will assume that the word is
defined in at least one English dictionary.
While marks must be compared in their entireties, there is
nothing improper in giving more or less weight to certain
features of the marks as being more dominant or otherwise
significant, and therefore to give those features greater weight.
6 In making this argument applicant relies on In re Merchandising
Motivation, Inc., 184 USPQ 364 (TTAB 1974), wherein the Board stated
that "...when the alleged appropriated mark is a common English word
and that word as used in a party's composite mark merely conveys its
Ser. No. 75/656,217
7
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). The respective marks FEMME and LA FEMME (stylized),
when compared in their entireties, are similar in appearance, and
virtually identical in sound, meaning and overall commercial
impression. The strongest impression of applicant's mark is
conveyed by the word "FEMME." That same word is registrant's
entire mark. The term LA is the equivalent of the French article
"the" and as such does not significantly affect the commercial
impression of applicant's mark or the English or foreign language
meaning the mark conveys. See, e.g., In re Central Soya Company,
Inc., 220 USPQ 914, 916 (TTAB 1984). In fact, the translated
meanings of the respective marks in the application and
registration are nearly identical. The registration contains a
translation of FEMME as, inter alia, "woman" or "wife" and
applicant has translated its own mark LA FEMME in the application
as "the woman" or "the wife." If anything, the combination of LA
and FEMME simply reinforces the French flavor of the mark and
enhances its similarity to the French word in registrant's mark.
Moreover, the wording in applicant's mark is given greater
weight than its stylization because the words would be used by
purchasers to request the goods and they are therefore more
common meaning...then the trademark is not incorporated into the
composite mark."
Ser. No. 75/656,217
8
likely to be remembered by purchasers. See In re Appetito
Provisions Co., supra. In this case, the stylization of
applicant's mark results only in a modest visual difference in
the marks which, if it is remembered at all, is not sufficient to
differentiate one mark from another. In addition, registrant's
mark, presented in typed form, is not restricted to any
particular style of lettering, and thus may be used by registrant
in the same stylization used by applicant. See Squirtco v. Tomy
Corporation, 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir.
1983).
The point is that while there are minor visual and phonetic
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, purchasers familiar with applicant's stylized mark LA
FEMME, upon seeing registrant's mark FEMME on related goods, are
likely to be confused inasmuch as both marks have the same
connotation.
While the word FEMME may be suggestive in relation to the
identified goods, we have no evidence that the word is commonly
used in the cosmetic or related fields, or any other evidence in
the record to suggest that "femme" is weak, or entitled to a
Ser. No. 75/656,217
9
narrow scope of protection.7 However, applicant appears to argue
that because "femme" can be found in the English dictionary, the
word is weak. It is not entirely clear, but it appears to be
applicant's contention either that its own mark would be
recognized as a French term because of the French article LA
whereas registrant's mark would not; or that the combination of
the French article LA and the English word FEMME in applicant's
mark somehow creates an incongruity which changes the commercial
impression of applicant's mark and distinguishes its mark from
registrant's mark. Either way, applicant's argument fails.
Although there is a listing for the word "femme" in at least
one English dictionary, the evidence of record does not establish
that "femme" is primarily an English word. Rather, as applicant
recognizes, the origin of the word is from the French language.
We also note that both the registration and application file
contain English translations of "femme" as a foreign language
word. See, e.g., In re Bonni Keller Collections Ltd., 6 USPQ2d
7 Applicant, for the first time with its appeal brief, identified two
third-party registrations for marks which include the word "femme."
The Examining Attorney's objection to this evidence is well taken. The
registrations are untimely, having been introduced after the filing of
the appeal. See Trademark Rule 2.142(d). In any event, the Board does
not take judicial notice of third-party registrations, and the mere
listing of them is insufficient to make them of record. See In re
Duofold, 182 USPQ 635, 640 (TTAB 1974). Accordingly, the third-party
registrations have not been considered. Even if considered, the
registrations would not be persuasive of a different result in this
case.
Ser. No. 75/656,217
10
1224 (TTAB 1987) and In re Le Sorbet, Inc., 228 USPQ 27, 29 (TTAB
1985). More important, while the word "femme" may have entered
the English language, there is no evidence that the word is in
common use in the English language or even that relevant
purchasers are familiar with the word.8 The mere appearance of a
term in a dictionary does not establish that the term is known to
an appreciable number of Americans. See E.I. du Pont de Nemours
and Co. v. Sunlyra International Inc., 35 USPQ2d 1787, 1789 (TTAB
1995) ["If all words and terms found in dictionaries and other
reference works were generally known to the American public, the
need for such dictionaries and reference works would be
exceedingly small."].
In view of the foregoing, we conclude that consumers
familiar with registrant’s perfumes and cologne sold under its
mark FEMME would be likely to believe upon encountering
applicant’s stylized mark LA FEMME for cosmetic products, that
the goods originated with or are somehow associated with or
sponsored by the same source.
Decision: The refusal to register is affirmed.
8 For this reason, among others, applicant's reliance on In re
Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) is misplaced.
Ser. No. 75/656,217
11