Laboratoire Rene Guinot

Trademark Trial and Appeal Board

Dec 14, 2001

No. 75681947 (T.T.A.B. Dec. 14, 2001)

12/14/01 EWH
Paper No. 15

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Laboratoire Rene Guinot
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Serial No. 75/681,947
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Jay H. Geller for Laboratoire Rene Guinot.

Priscilla Miton, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
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Before Simms, Hanak and Quinn, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge.

Laboratoire Rene Guinot (applicant) seeks to
register in typed drawing form SKIN PEACE for “a full
line of skin care, body care, hair care, nail care, color
cosmetics and shaving care preparations.” The intent-to-
use application was filed on April 15, 1999.
The Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the
basis that applicant’s mark, as applied to applicant’s
goods, is likely to cause confusion with the mark PEACE,
previously registered in typed drawing form for
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
“potpourri, perfume bath oil, body oil, non-medicated
bath salts, sachets,
Ser. No. 75/681,947

scented skin soaps, [and] scented toilet soaps.”
(Registration No. 1,782,341).
When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. On June 28, 2000
applicant’s attorney requested an oral hearing. However,
in a telephone conversation with Administrative Trademark
Judge Hanak on November 21, 2001 applicant’s attorney
stated that applicant no longer wished to have an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative affect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Considering first the goods, they are, in part,
legally identical. To elaborate, applicant seeks to
register SKIN PEACE for, among other goods, a full line
of skin care and body care products. The cited mark
PEACE is registered for, among other goods, body oil and
skin soaps. A full line of
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Ser. No. 75/681,947

skin and body care products (certain of applicant’s
goods) would clearly encompass body oil and skin soaps
(certain of registrant’s goods).
Considering next the marks, we note at the outset
that when the goods are at least in part legally
identical as is the case here, “the degree of similarity
[of the marks] necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). Applicant has adopted
registrant’s PEACE mark in its entirety, and merely added
to it the descriptive word SKIN. As applied to skin care
products (certain of applicant’s goods), the word “skin”
is clearly descriptive. Moreover, we note that with its
initial application, applicant disclaimed the exclusive
right to use the word “skin” apart from the mark in its
entirety.
In comparing marks, we are obligated to compare the
marks in their entireties, including any matter which is
descriptive. American Home Products v. B.F. Ascher, 473
F.2d 903, 176 USPQ 532, 533 (CCPA 1973). However, there
is nothing improper in comparing marks to give more
weight to the dominant element of a mark consisting of
two or more
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words. In the case of applicant’s mark SKIN PEACE, the
arbitrary word PEACE clearly dominates over the
disclaimed, descriptive word SKIN. 3 J. McCarthy,
McCarthy on Trademarks and Unfair Competition Section
23:45 at page 23-99 (4th ed. 2001). A consumer familiar
with registrant’s PEACE body oil and skin soaps, upon
seeing applicant’s mark SKIN PEACE on a complete line of
skin and body care products, could well assume that both
registrant’s products and applicant’s products emanate
from a common source. Said consumer would believe that
the maker of PEACE body oils and skin soaps, upon
expanding its offerings to include a full line of skin
and body care products, elected to “expand” its PEACE
mark by adding the descriptive word SKIN to form the mark
SKIN PEACE.
In short, because applicant’s goods and registrant’s
goods are, at least in part, legally identical, and
because applicant has adopted registrant’s mark in its
entirety and merely added a descriptive word to it, we
find that there exists a likelihood of confusion
resulting from the contemporaneous use of SKIN PEACE for,
at a minimum, a full line of skin care and body care
products, and PEACE for, at a minimum, body oils and skin
soaps. Our finding that there
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exists a likelihood of confusion is only bolstered by
applicant’s admission at page 6 of its brief that “both
the applicant’s and registrant’s goods are what would be
considered ‘impulse’ goods,” and that “none of these
types of goods is necessarily costly.” In short,
applicant has conceded that in selecting its goods and
registrant’s goods, consumers act on impulse and exercise
only a limited degree of care.
One final comment is in order. As explained in
orders of this Board dated July 10, 2001 and August 20,
2001, applicant has at various times throughout this
proceeding improperly tried to introduce into evidence
third-party registrations containing the words PEACE, as
well as what purport to be third-party advertisements on
the Internet for skin care products whose brand names
contain the word PEACE. For the reasons outlined in
these two Board orders, we have accorded this “evidence”
no weight.
However, even if we had considered this “evidence”
which was improperly introduced, said “evidence” would
not change our opinion that there exists a likelihood of
confusion. The third-party registrations and the handful
of Internet advertisements do not show the extent of use
of the
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word PEACE in connection with skin and body care
products. Because applicant has provided absolutely no
evidence showing the extent to which consumers have been
exposed to skin and body care products whose brand names
contain the word PEACE, we are not in a position to say
that consumers have become so accustomed to seeing the
word PEACE used in connection with these products such
that they look to other parts of trademarks to
distinguish among said products. See Smith Brothers v.
Stone Manufacturing, 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973) (“But in the absence of any evidence showing
the extent of use of any of such marks or whether any of
them are now in use, they [the third-party registrations]
provide no basis for saying that the marks so registered
have had, or may have, any effect at all on the public
mind so as to have a bearing on likelihood of
confusion.”).
Decision: The refusal to register is affirmed.

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