Murad, Inc.

Trademark Trial and Appeal Board

Aug 20, 2009

No. 77551163 (T.T.A.B. Aug. 20, 2009)

Mailed:
August 20, 2009
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Murad, Inc.
________

Serial No. 77551163
_______

Michael A. Painter of Isaacman, Kaufman & Painter, P.C. for
Murad, Inc.

Rebecca L. Gilbert, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Murad, Inc. (applicant) has applied to register the
mark RESILIENT-COMPLEX C in standard characters on the
Principal Register for goods identified as “non-medicated
skin care preparations, namely, creams, lotions, gels,
toners, cleaners and peels” in International Class 3.1
Applicant has disclaimed “COMPLEX.”

1 Application Serial No. 77551163, filed August 20, 2008, based
on applicant’s statement of a bona fide intention to use the mark
in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77551163
2
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
based on a likelihood of confusion between applicant’s
RESILIENT-COMPLEX C mark and the marks in the following
three active registrations, all owned by Estee Lauder Inc.:
Registration No. 1884181 for the mark RESILIENCE
in typed form on the Principal Register for “skin
moisturizer” in International Class 3; the
registration issued on March 14, 1995, and it has
been renewed;

Registration No. 1946865 also for the mark
RESILIENCE in typed form on the Principal
Register for “eye cream and skin lotion” in
International Class 3; the registration issued on
January 9, 1996, and it has been renewed; and

Registration No. 2786645 for the mark RESILIENCE
LIFT in typed form on the Principal Register for
“non-medicated skincare products, namely,
moisturizing cremes, lotions and balms” in
International Class 3; the registration issued on
November 25, 2003.

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Before addressing the merits, we must attend to one
evidentiary issue. With its reply brief applicant for the
first time attempted to introduce evidence with respect to
five third-party registrations for marks which include
either RESILIENT, RESILIENCE or RESILIENCY, all for
services unrelated to the goods at issue here. Applicant
refers to information regarding these registrations in its
Serial No. 77551163
3
reply brief, but applicant did not submit copies of the
registrations. The record must be complete prior to
appeal, subject to certain exceptions not relevant here.
See 37 C.F.R. § 2.142(d). Applicant’s submissions here are
manifestly late. Therefore, we exclude this evidence from
consideration. We note further that, even if applicant had
submitted this evidence prior to appeal, it is not in
acceptable form. The Board does not take judicial notice
of office records related to third-party registrations;
applicants must submit appropriate copies of USPTO records
to make registrations properly of record in an appeal. In
re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998);
In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998), aff’d,
194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).
Furthermore, even if we had considered this evidence, we
would reach the same conclusions in this appeal.
Turning to the merits, Section 2(d) of the Trademark
Act precludes registration of an applicant’s mark “… which
so resembles a mark registered in the Patent and Trademark
Office… as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion….” 15
U.S.C. § 1052(d). The opinion in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977)
sets forth the factors to consider in determining
Serial No. 77551163
4
likelihood of confusion. Here, as is often the case, the
crucial factors are the similarity of the marks and the
similarity of the goods identified in the application and
the cited registrations. 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 effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
First, we consider the respective goods. In general,
the goods of applicant and the registrant need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). We may find the goods to be related if
the circumstances surrounding their marketing would result
in relevant consumers mistakenly believing that the goods
originate from or are associated with the same source. See
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
registration. 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
Serial No. 77551163
5
be decided on the basis of the respective descriptions of
goods.”).
In this case, applicant has not presented any
arguments with respect to the goods in either of its
briefs. Applicant’s goods and the goods identified in each
of the three cited registrations are, at least in part,
identical.
Applicant identifies its goods as “non-medicated skin
care preparations, namely, creams, lotions, gels, toners,
cleaners and peels.” Applicant’s non-medicated skin
preparations, which are creams or lotions, are sufficiently
broadly defined to overlap with some or all of the goods in
each of the cited registrations: “skin moisturizer”; “eye
cream and skin lotion”; and “non-medicated skincare
products, namely, moisturizing cremes, lotions and balms.”
Accordingly, we conclude that applicant’s goods are
identical, at least in part, to the goods in each of the
cited registrations.
Next, we consider the marks, and we begin by noting
that the degree of similarity between the marks necessary
to support a finding of likelihood of confusion declines
when the goods are identical. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
Serial No. 77551163
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More generally, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
The Examining Attorney argues that RESILIENCE is
dominant because it is the only element in the first two
cited registrations and because LIFT, the only other
element in the mark in the third cited registration, is
highly suggestive. As to applicant’s mark, the Examining
Attorney argues that RESILIENT is dominant because COMPLEX,
which is disclaimed, is highly descriptive and because C
Serial No. 77551163
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refers to the fact that applicant’s goods contain Vitamin C
as an antioxidant. The Examining Attorney then argues that
RESILIENCE and RESILIENT are highly similar and thus
concludes that the marks are similar overall in appearance,
sound, connotation and commercial impression.
Applicant argues repeatedly that the Examining
Attorney has failed to view the marks in their entireties
in her analysis, noting, among other things, that
disclaimed matter cannot be ignored. Applicant argues,
“Appellant’s mark does not consist of or include the word
RESILIENCE. To the contrary, the primary segment of the
proposed mark is the word RESILIENT. In addition, the
terms ‘-C’ and ‘COMPLEX’ are an integral part of
Appellant’s mark. … There is no general rule as to which
feature of a mark will dominate. … Where non-common
portions of mark are sufficient to distinguish the marks as
a whole, the inclusion of a common element may be
insufficient to predicate a holding of confusing
similarity….” Applicant’s Brief at 4 (internal citation
omitted).
Applicant argues further that RESILIENT and RESILIENCE
differ in appearance and sound, and applicant also attempts
to distinguish the meanings of RESILIENT and RESILIENCE
using dictionary definitions. Applicant states, “The
Serial No. 77551163
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primary definition of ‘resilient’ relates to a body’s
capability of withstanding shock. ‘Resilience’
specifically relates to a body’s recovery from deformation
by compressive stress, not shock.” Id. at 5.
In its reply brief, while still arguing stridently
that the Examining Attorney failed to consider the marks in
their entireties, applicant states, “Applicant concedes the
dominant portion of the subject mark [RESILIENT-C COMPLEX]
is the word RESILIENT.” Reply Brief at 1.
We have viewed the marks in their entireties and
conclude that applicant’s mark is similar to each of the
marks in all three cited registrations. We find both
applicant’s interpretation of the cases and view of the
marks strained.
After positing that -- “There is no general rule as to
which feature of a mark will dominate.” -- applicant
nonetheless interprets certain cases to require that we
accord undue weight to C COMPLEX in its mark and LIFT in
the third cited registration. We base our analysis of the
marks on the bedrock guidance from the Court of Appeals for
the Federal Circuit: “… in articulating reasons for
reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
Serial No. 77551163
9
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
In this case, we have no doubt that RESILIENT is the
dominant element in applicant’s mark, a point which
applicant concedes. We note again that applicant has
disclaimed “COMPLEX” and that applicant has not disputed
the Examining Attorney’s contention that “C” refers to the
inclusion of Vitamin C as an ingredient in applicant’s
skin-care preparations.
RESILIENCE is the only element in the marks in the
first two cited registrations, and the dominant element in
the mark in the third cited registration, RESILIENCE LIFT.
Applicant disputes the Examining Attorney’s assertion that
LIFT is suggestive. However, we find the Examining
Attorney’s position reasonable in that LIFT could suggest a
lifting or improvement of the skin. At the very least LIFT
is subordinate to RESILIENCE in that LIFT follows
RESILIENCE in the mark. Cf. Presto Products, Inc. v. Nice-
Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it
is] a matter of some importance since it is often the first
part of a mark which is most likely to be impressed upon
Serial No. 77551163
10
the mind of a purchaser and remembered.”). Indeed, the
fact that RESILIENT and RESILIENCE appear first in the
respective marks is “of some importance” for purposes of
our comparison of applicant’s mark to the cited marks.
The ultimate issue here is whether RESILIENT, the
dominant element in applicant’s mark, is similar to
RESILIENCE, the only element, or the dominant element in
each of the marks in the cited registrations. Here again,
we find applicant’s arguments strained. In arguing that
they are not similar, applicant goes beyond a side-by-side
comparison, which the cases caution against, to a nearly
microscopic comparison.
We reject applicant’s argument that there is any
significant difference between RESILIENT and RESILIENCE in
appearance or sound. To suggest otherwise is to inflate
the importance of the subtle differences beyond reason.
Simply put, the two words are not only highly similar in
appearance and sound, but the differences are nearly
imperceptible apart from a side-by-side comparison.
More importantly, RESILIENT and RESILIENCE are variant
forms of the very same word. Applicant’s attempt to
distinguish the two based on meaning falls flat. First,
the meanings applicant urges us to consider, though taken
from the dictionary, have no relevance in the context of
Serial No. 77551163
11
the goods at issue here, skin-care products. Out of
necessity, we will rely on the more relevant and probative
meanings from the Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003) for each of the terms, “resilient” – “… b :
tending to recover from or adjust easily to misfortune or
change syn see ELASTIC…” and “resilience” – “… 2 : an
ability to recover from or adjust easily to misfortune or
change.”2 Thus, RESILIENT and RESILIENCE not only look and
sound alike, but they convey the exact same connotation and
commercial impression. In the context of skin-care
products, they connote and convey the impression that the
products will afford the skin the ability to recover from
or adjust to adverse conditions, such as, climate or aging.
Accordingly, after considering the respective marks in
their entireties, we conclude that applicant’s mark is
similar to each of the marks in the three cited
registrations in appearance, sound, connotation and
commercial impression.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any we have not
specifically discussed here, we conclude that there is a

2 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Serial No. 77551163
12
likelihood of confusion between applicant’s RESILIENT-C
COMPLEX mark when used in connection with “non-medicated
skin care preparations, namely, creams, lotions, gels,
toners, cleaners and peels” and the registered RESILIENCE
marks when used in connection with “skin moisturizer” or
“eye cream and skin lotion” and the registered RESILIENCE
LIFT mark when used in connection with “non-medicated
skincare products, namely, moisturizing cremes, lotions and
balms.”
Decision: We affirm the refusal to register
applicant’s mark under Trademark Act Section 2(d) based on
all three cited prior registrations.