Palm Beach Tan, Inc.

Trademark Trial and Appeal Board

May 21, 2021

88616217 (T.T.A.B. May. 21, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: May 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Palm Beach Tan, Inc.
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Serial No. 88616217
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Cathryn A. Berryman of Winstead PC,
for Palm Beach Tan, Inc.
Katherine Stoides, Trademark Examining Attorney, Law Office 101,
Zachary R. Sparer, Managing Attorney.
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Before Taylor, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Palm Beach Tan, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark

Serial No. 88616217
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for “Cosmetic preparations for skin care in the nature of tanning creams, lotions and
gels; skin creams, lotions and gels for accelerating, enhancing, intensifying and
extending tans; after tanning gels, creams and lotions; body and cosmetic creams,
lotions and gels; body and facial skin bronzers” in International Class 3.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the following registered marks owned by different
entities: for

1 Application Serial No. 88616217 was filed on September 13, 2019, based upon Applicant’s
assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

“Premier Collection” is disclaimed. The application also includes the following description of
the mark: “The mark consists of a palm tree design with the right side of the trunk circling
above the palm tree and the words ‘PREMIER COLLECTION’ to the right of the design, all
vertically oriented and depicted to the left of the word ‘SUNSATIONAL’ in stylized lettering.
A stylized line appears below the word ‘SUNSATIONAL.’” Color is not claimed as a feature
of the mark.

Page references to the application record refer to the online database pages of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system. Applicant’s brief is at 6 TTABVUE. The
Examining Attorney’s brief is at 8 TTABVUE. Applicant’s reply brief is at 9 TTABVUE.

Serial No. 88616217
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“Tanning salons”2 in International Class 44 and SUNSATIONAL TANS (standard
character, “Tans” disclaimed) for “Tanning salons; Airbrush skin tanning services for
humans for cosmetic purposes; Skin tanning service for humans for cosmetic
purposes” in International Class 44. 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. After briefing, Applicant sought a remand
to amend the identification to limit the sale of the goods to its franchises and franchise
retail stores and to provide the declaration of Eric Hall, Chief Financial Officer of
Applicant, to explain about the marketing, trade channels and consumers for its
goods. 10 TTABVUE. Jurisdiction was restored to the Examining Attorney. The
Examining Attorney denied the request to amend the identification because
Applicant included unacceptable terminology in the proposed amendment, noted that
even if it were acceptable, the amendment would not overcome likely confusion, and
maintained the Section 2(d) refusal.4

2 Registration No. 5405147 issued February 20, 2018. The registration includes the following
description of the mark: “The mark consists of a stylized sun in yellow and orange, with a
blue wave design below and a grey line representing a bird in the foreground, all above the
word ‘SUNSATIONAL’ in yellow on an orange background.” The color(s) yellow, orange, grey
and blue are claimed as a feature of the mark.
3 Registration No. 5533298 issued August 7, 2018.
4 Applicant, in its appeal brief, initially sought to amend “in the alternative” its identification
of goods to include the wording “all of the foregoing being offered for sale through Applicant’s
retail and online franchise stores.” Apart from the Examining Attorney’s subsequent denial
of Applicant’s proposed amendment on remand, a contingent amendment to Applicant’s
identification of goods cannot be entered following a final decision on the application,
regardless of the outcome on the Section 2(d) refusal. Once an application has been considered
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Thereafter, the appeal again was resumed, and deemed ready for a final decision.
Almost two months later, Applicant submitted a second request for remand to propose
another amendment to the identification. We find no good cause for another remand
at this late stage in the proceeding, where briefing is complete, the application
previously has been remanded at Applicant’s request, and the Examining Attorney
already has indicated that Applicant’s proposed trade channel restriction in the
identification would not overcome the refusal (12 TTABVUE 3). See TBMP § 1205.01
(2020) (“A request for remand to consider an amendment will be granted upon a
showing of good cause” but remand may be refused if it “would serve no useful
purpose”; also noting that remands are discretionary and whether good cause is found
will depend on the point in the proceeding and reason for the delay). The request for
remand is therefore denied.
We affirm the refusal to register.
I. Likelihood of Confusion
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

and decided on appeal it will not be reopened except for the entry of a disclaimer or upon
order of the Director. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).

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USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).
A. Similarity or Dissimilarity of the Marks
We turn to the first DuPont factor, which requires us to determine the similarity
or dissimilarity of the marks when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005). The test under the first DuPont factor is not whether the marks can
be distinguished when subjected to a side-by-side comparison, but whether the marks
are sufficiently similar in terms of their overall commercial impression that confusion
as to the source of the goods or services offered under the respective marks is likely
to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed.
Cir. 2018).
The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. In re St. Julian Wine Co., 2020
USPQ2d 10595, at *4 (TTAB 2020). Consumers may not necessarily encounter the
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marks in close proximity and must rely upon their recollections thereof over time. In
re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988).
As indicated, in analyzing the similarity of the marks, we must consider them in
their entireties. However, it is nevertheless appropriate, for rational reasons, to
regard certain features of the marks as being more dominant or otherwise significant,
and therefore to give those features greater weight. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Descriptive or
generic terms in a mark are often less significant in creating the mark’s commercial
impression and generally given less weight. See In re Nat’l Data Corp., 224 USPQ at
751 (“a descriptive component of a mark may be given little weight in reaching a
conclusion on likelihood of confusion”); In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001).
In the case of marks which consist of words and a design, the words are generally
accorded greater weight because they would be used by purchasers to request the
goods or services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (“In the case of a composite mark containing both words and a design, ‘the
verbal portion of the mark is the one most likely to indicate the origin of the goods to
which it is affixed.”’) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983)). “The verbal portion of a word and design mark ‘likely will appear
alone when used in text and will be spoken when requested by consumers.”’ In re
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Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (quoting Viterra,
101 USPQ2d at 1911).
Registration No. 5533298
The cited mark in Registration No. 5533298 is SUNSATIONAL TANS (in
standard characters and with “Tans” disclaimed) and Applicant’s mark is
(“Premier Collection” disclaimed).
Marks appearing in standard character form, such as the cited mark, may be
displayed in any font style, color, and size, because the rights reside in the wording
and not in any particular display or rendition. See Citigroup Inc. v. Capital City Bank
Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the registrant ... obtains a
standard character mark without claim to ‘any particular font style, size or color,’ the
registrant is entitled to depictions of the standard character mark regardless of font,
style, size, or color.”). Therefore, the cited mark could be displayed in fonts similar to
those displayed by Applicant’s mark.
Applicant argues that there are “substantial and obvious differences” between the
two cited marks. 6 TTABVUE 7. Applicant points out that the cited mark is different
in sound and appearance from Applicant’s mark as the cited mark contains two
terms, while Applicant’s mark contains three terms and a “distinctive design.” Id.
Applicant also points out that Applicant owns the PREMIER COLLECTION and
DESIGN mark, registered on the Principal Register, and that it also is the owner of
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a PREMIER COLLECTION (standard character) mark registered on the
Supplemental Register for more than five years.5 6 TTABVUE 8; 9 TTABVUE 5-6.
Applicant submits that the wording PREMIER COLLECTION has acquired
distinctiveness and should not be treated as descriptive. Id. Applicant also argues
that the addition of PREMIER COLLECTION and design distinguishes its mark from
the cited mark. 6 TTABVUE 8; 9 TTABVUE 5-6.
We acknowledge that there are differences between the marks, but we find the
marks, in their entireties, to be similar. The marks are similar in that each mark
contains the identical word SUNSATIONAL, a coined term, with the additional
descriptive wording disclaimed. Each mark is clearly dominated by the identical
term, SUNSATIONAL, given the highly descriptive nature of the disclaimed
secondary word(s) in the respective marks. In Applicant’s mark, SUNSATIONAL is
clearly dominant because it is by far the largest and most prominent element of the
mark. SUNSATIONAL has the identical connotation and commercial impression, to
the extent it has one, in both marks.

5 Applicant’s application had a typographical error in referencing the registration number of
one of the prior registrations. The Examining Attorney noted in her brief that “applicant was
advised that its claim of ownership of U.S. Registration No. 4891693 would not be printed
because USPTO records show ownership in an entity other than in the applicant.” 8
TTABVUE 3, note 3. In in its brief, Applicant has identified Registration Nos. 4890693 and
4896368 for PREMIER COLLECTION (Supplemental Register) and PREMIER
COLLECTION and Design (Principal Register), respectively. 6 TTABVUE 8; 9 TTABVUE 5.
We note that a registration on the Supplemental Register is not evidence of distinctiveness
of the mark. As to the registration on the Principal Register, the wording “Premier Collection”
is disclaimed and is a concession of the descriptiveness of the term. Applicant also has
referenced in its reply brief an application for PREMIER COLLECTION under Section 2(f).
We note that as to its pending application, “applicant’s reliance on Section 2(f) presumes that
the mark is descriptive.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d
1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
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Although the disclaimed wording PREMIER COLLECTION in Applicant’s mark
and TAN in the cited mark create points of difference in sound and appearance
between the marks, this wording is unlikely to be used by consumers to identify the
source of the respective goods or services. The placement and size of the wording
PREMIER COLLECTION, along with the additional visually small palm tree design
element in Applicant’s mark, contribute little to the overall commercial impression of
the mark. Although Applicant argues otherwise, Applicant’s disclaimer of PREMIER
COLLECTION in the application is a concession of the descriptiveness of these terms.
See In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988).
We recognize that the addition of a house mark, a trade name, or other matter
may obviate confusion, when the additional matter, including house marks, conveys
a significantly different commercial impression when considering the marks in their
entireties. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-
57 (Fed. Cir. 2004). However, to the extent that Applicant is arguing that the addition
of PREMIER COLLECTION and design, or PREMIER COLLECTION (its prior
registered marks), creates such a significant point of distinction, we find this
argument unavailing. The addition of PREMIER COLLECTION and design or
PREMIER COLLECTION does not convey a significantly different connotation and
commercial impression when combined with SUNSATIONAL.
We find the marks are more similar than dissimilar. Because Applicant’s mark
and the cited mark are both dominated by the wording SUNSATIONAL, when
considered in their entireties, the marks’ similarities in appearance, sound, meaning,
Serial No. 88616217
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and commercial impression overcome their differences. See In re Denisi, 225 USPQ
624, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is the same, then
confusion may be likely notwithstanding peripheral differences.”).
Registration No. 5405147
The mark in Registration No. 5405147 is . Applicant’s
mark is .
Applicant argues that its involved mark contains “multiple additional elements”
including additional “stacked” words and a distinctive design, that create substantial
and obvious differences in sound and appearance with the cited SUNSATIONAL
word and design mark. 6 TTABVUE 7-8. Applicant also points out that Applicant’s
previously registered PREMIER COLLECTION and design and PREMIER
COLLECTION marks have been incorporated into its proposed mark, which it
asserts makes its proposed mark distinguishable from the cited mark. 6 TTABVUE
8; 9 TTABVUE 5-6.
In the case of Applicant’s mark, the words dominate over the palm tree design
element as the design is very small, positioned vertically, less likely to be noticed by
consumers, and would not be used to call for the goods. The dominant feature of the
literal portion of Applicant’s mark is SUNSATIONAL which is displayed horizontally,
underlined, and in much larger lettering than the disclaimed wording “Premier
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Collection” which is in much smaller type, and displayed vertically next to the palm
tree design. Because of its relative size and placement, we find that consumers would
focus on the more prominent term SUNSATIONAL for source identification.
Although the disclaimed wording PREMIER COLLECTION in Applicant’s mark
creates a point of difference in sound and appearance with the cited mark, as
indicated, this term would not be used by consumers as a source indicator to identify
the source of the goods.
As to the cited mark, while the sun design with waves and a bird is a visually
significant feature of Registrant’s mark, we find that the design element is
nonetheless entitled to a lesser weight in assessing the mark’s commercial
impression. As is generally the case with word and design marks, the dominant
source-indicating feature of the cited word and design mark is the literal portion,
SUNSATIONAL. Although incorporated in the overall design, the word
SUNSATIONAL is visually larger than the sun, wave, and bird design elements. The
sun design reinforces the connotation of the “sun” portion of “sunsational.” In re Wine
Society of Am., 12 USPQ2d 1139, 1142 (TTAB 1989) (design features emphasize in a
pictorial way the main word features). Thus, SUNSATIONAL would make a greater
impression on purchasers and is the portion that is more likely to be remembered as
the dominant and source-signifying portion of the registered mark. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 2001) (“words are normally accorded
greater weight because they would be used by purchasers to request the goods”). See
also, e.g., In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
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Applicant’s mark incorporates in its entirety the literal portion of Registrant’s
mark, SUNSATIONAL. The marks are similar in sound, appearance, meaning and
commercial impression to the extent they share the term SUNSATIONAL. As to
Applicant’s argument that the incorporation of its registered mark PREMIER
COLLECTION and design adds distinctive elements to Applicant’s proposed mark,
for the reasons stated above, we do not find the addition distinguishes Applicant’s
mark from the cited word and design mark. We find the marks are similar.
Therefore, although the design element and additional wording in Applicant’s
mark provides points of difference with Registrant’s word and design mark, when the
marks are viewed in their entireties, we find that this difference is not sufficient to
overcome their overall similarities, particularly in view of the fallible memories of
consumers, who retain general impressions of marks. See Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d No. 92-1086 (Fed. Cir. June
5, 1992).
The first DuPont factor weighs in favor of a finding of likelihood of confusion.
B. Similarity or Dissimilarity of the Goods and Services
We next consider the second DuPont factor, “[t]he similarity or dissimilarity and
nature of the goods or services as described in an application or registration.” In re
Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting
DuPont, 177 USPQ at 567). Our analysis under this factor is based on the
identifications of goods in the application and the identification of services in the cited
registrations. Id.; Stone Lion, 110 USPQ2d at 1161-63. It is sufficient for a finding of
Serial No. 88616217
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likelihood of confusion as to a particular class if relatedness is established for any
item of identified goods or services within that class in the application or cited
registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
Applicant’s goods are “Cosmetic preparations for skin care in the nature of tanning
creams, lotions and gels; skin creams, lotions and gels for accelerating, enhancing,
intensifying and extending tans; after tanning gels, creams and lotions; body and
cosmetic creams, lotions and gels; body and facial skin bronzers.” The services in
Registration No. 5405147 are “Tanning salons.” The services in Registration No.
5533298 are “Tanning salons; Airbrush skin tanning services for humans for cosmetic
purposes; Skin tanning service for humans for cosmetic purposes.”
Applicant argues that “Applicant’s skin care goods are “not recognized as services
at all” and its goods are “highly specialized and customized to particular ‘tasks’ or
purposes sought by a consumer,” which is to moisturize the skin. 6 TTABVUE 8.
Applicant submits that Registrants’ tanning and airbrushing services are
“substantially dissimilar in purpose, function and feature” and “sufficiently and
distinctly different” from Applicant’s skin care goods as Registrants’ services involve
providing tanning beds for consumer use. 6 TTABVUE 8-9. Applicant also argues that
its goods are not categorized as services and that the Examining Attorney’s evidence
is insufficient to establish relatedness. 6 TTABVUE 15.
It is well settled that goods and services need not be identical or even competitive
in order to support a finding of likelihood of confusion. Rather, it is sufficient that the
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goods and services are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to be encountered by
the same persons in situations that would give rise, because of the marks used
thereon, to the mistaken belief that they originate from or are in some way associated
with the same producer or provider. See Coach Servs. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
It also is well established that goods can be related to services, particularly where
the services involve the goods in some manner. See, e.g., In re Hyper Shoppes (Ohio)
Inc., 837 F. 2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (involving general merchandise
stores and furniture); Safety-Klean Corp. v. Dresser Indus. Inc., 518 F.2d 1399, 186
USPQ 476 (CCPA 1975) (involving servicing of apparatus for cleaning mechanical
parts and mechanical parts); Steelcase, Inc. v. Steelcare, Inc., 219 USPQ 433 (TTAB
1983) (involving furniture refinishing services and office furniture).
We find that the identified skin care products and tanning preparations and
tanning salons are complementary, closely related goods and services. The
Examining Attorney has submitted printouts from third-party tanning salon
websites showing that tanning salons typically offer skin care products for sale in
conjunction with the tanning services. Glow, The Bronzing Studio states that it offers
“a wide variety of UV and UV free tanning options and the products you need to
create, boost and extend color.” March 5, 2020 Office Action at TSDR 2. The Bronzing
Barn offers on the same webpage spray tan services and displays tan additives and
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tan extender lotions that “enhance and extend the life of your tan.” Id. at TSDR 3.
Tan Fantastic offers tanning beds and spray tanning and offers skin care products
from Australian Gold, Swedish Beauty and Designer Skin, among others. October 4,
2020 Office Action at TSDR 3. Sun Tan City offers tanning services and offers the
“best skin care products on the market” in conjunction with their “tanning
equipment.” Their employees help you choose the best combination of lotions and
tanning equipment for your skin type and tanning goals. Id. at TSDR 4. B-Tan
Tanning Salon offers its own line of skin care lotions, from bronzers to moisturizers.
Id. at TSDR 2. Its webpage explains that lotions will maximize your tan and provide
smooth skin.
The Examining Attorney also submitted webpages from Applicant’s website.
Applicant’s webpage provides links to “skincare.” Applicant offers an exclusive line of
“premium skincare products [under the Palm Beach Tan Premier Collection] such as
“sunbed tanning lotion” and “sunless products for spray tanning” to “achieve darker,
longer lasting color” and nourish the skin. Applicant also offers a wide variety of
tanning lotions from brands such as Australian Gold, Swedish Beauty, and Designer
Skin. March 5, 2020 Office Action at TSDR 4. September 4, 2020 Request for
Reconsideration at TSDR 17, 21. In addition, Applicant’s witness Eric Hall, confirms
that Applicant offers skin care products for “tanning and sunless tanning.” Request
for Remand 10 TTABVUE 7, Hall declaration, ¶ 5. Mr. Hall states that the offering
of tanning products by individual tanning salons “are mere amenities to their primary
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sales of tanning salon sessions.” Request for Remand 10 TTABVUE 8, Hall
declaration, ¶ 8.
We also find relevant evidence submitted by Applicant of Registrants’ Facebook
pages showing that the cited Registrants offer for sale skin care products in
connection with their tanning services. Registrant SunSational Tanning Salon
(Beaumont, California) offer discounts on tanning lotions. September 4, 2020 Request
for Reconsideration at TSDR 5-6. Registrant Sunsational Tans (Vincennes, Indiana)
offers “a large great stock of lotion to choose from” and offers sales on its lotions in
connection with its tanning services. Id. at TSDR 7-8. Applicant also submitted
webpages from Sunsational Tans’ website that indicate that it has advanced tanning
beds and that its staff has extensive lotion training. February 4, 2020 Response to
Office Action at TSDR 5; September 4, 2020 Request for Reconsideration at TSDR 10.
The testimony and evidence establishes that Applicant’s skin care products and
Registrant’s tanning services are complementary and related inasmuch as the goods
and services are used together, and tanning salons market and sell skin care products
to nourish the skin and extend the life of tan. The evidence further shows that
tanning salons may sell their own private label version of skin care products in
addition to third-party skin care products. Thus, we find that Applicant’s goods and
the cited Registrants’ services are related for purposes of our likelihood of confusion
determination.
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C. Channels of Trade, Classes of Purchasers, and Conditions of Sale
The third DuPont factor considers “the similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Our analysis under
this factor is based on the identifications of goods in the application and the
identification of services in the cited registrations. Stone Lion, 110 USPQ2d at 1161-
63.
Applicant argues that the Examining Attorney has made a “fundamental but
flawed presumption” that consumers will encounter its private label goods in the
marketplace. 9 TTABVUE 6-7. In particular, Applicant argues that its goods are
marketed differently from any third-party products marketed by the Registrants. 6
TTABVUE 9. According to Applicant, its goods are private label products which are
“a key staple of tanning salon franchises and multiple salon operators” and these
goods “will not be commingled with other commercially manufactured skin care goods
manufactured and sold by third-party wholesale manufacturers and their salon
customers in the broad tanning marketplace,” because its private label skin care
goods are only offered in its franchises. 6 TTABVUE 9-10, 13, 16. Applicant argues
that the “market truth” is that private label products are cost prohibitive for
independent salons such as Registrants’ and will not be offered by them. 6 TTABVUE
13. Applicant has supported these statements by referencing its Request for Remand
which provided the declaration of Eric Hall. Request for Remand 10 TTABVUE 6-9.
Applicant also submits that the Registrants market and target their sales to their
local markets given the fact that they are singular independent salons operating in a
Serial No. 88616217
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specific geographic location, Beaumont, California and Vincennes, Indiana,
respectively.6 6 TTABVUE 9, 10, 12.
The Examining Attorney points out that Applicant’s arguments that private label
goods will not be comingled with goods from third-party manufacturers is
contradicted by the evidence of record showing Applicant offers its “private label
products along with skin care products sourced by third-party manufacturers.” 8
TTABVUE 15. The Examining Attorney submits that the evidence shows that
tanning salons “all offer skin care products along with their tanning salon services”
and “[c]onsumers are therefore accustomed to encountering tanning skin care
products and tanning salon services in the same channels of trade.” 8 TTABVUE 12.
The application and cited registrations at issue contain no limitations as to the
channels of trade for the listed goods and services. An applicant may not restrict the
scope of its goods or services or the scope of the goods or services covered in the cited
registration by extrinsic argument or evidence.7 See, e.g., In re Midwest Gaming &
Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013). Thus, regardless of Applicant’s
witness testimony, Applicant’s website evidence, and Registrants’ Facebook and

6 Applicant’s brief mentions concurrent consents filed by both Registrants in their trademark
applications, but this information is not in the record. However, even if the consent
agreements were of record, the fact that the Registrants have reached an agreement to avoid
likelihood of confusion for similar marks is not an admission or evidence that the Registrants’
marks and the Applicant’s confusingly similar mark can coexist.
7 We note that the cited registrations entitle the owners to nationwide rights, regardless of
the geographic extent of actual use of the cited marks. 15 U.S.C. § 1057(b); Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983). “[T]he Board
is constrained to evaluate similarities in terms of potentially nationwide markets.” In re
Integrity Mutual Ins. Co., 216 USPQ 895, 896 (TTAB 1982).
Serial No. 88616217
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website evidence, we must consider, in view of the unrestricted trade channels, that
Applicant’s skin care products and Registrants’ services will be sold in all channels of
trade normal for such goods or services. See Coach Servs., 101 USPQ2d at 1723
(absent limitation, “goods are presumed to travel in all normal channels . . . for the
relevant goods.”).
Therefore, Applicant’s skin care products (which are not identified as private label
and are unrestricted) are deemed to travel in all appropriate channels of trade, which,
as the evidence reflects, would include being offered for purchase at both franchised
and independent tanning salons in connection with tanning services. Thus, they
would be encountered by some of the same classes of consumers.
We find the channels of trade and classes of consumers favor a finding of likelihood
of confusion.
As to the fourth DuPont factor, we consider the “conditions under which and
buyers to whom sales are made-, i.e. ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont 177 USPQ at 567.
As to conditions of sale, Applicant argues, based on the declaration of Mr. Hall,
that “consumers in the tanning industry are brand loyal and sophisticated, and that
they give heightened attention to tanning products offered under private label versus
third-party manufacturers.” 6 TTABVUE 7, 16; see Request for Remand, 10
TTABVUE 8, Hall Declaration ¶ 10. Applicant argues that consumers can discern the
differences between Applicant’s private label skin care products and skin care
products “sourced from third party manufacturers” because consumers would not
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expect an independent tanning salon to offer private label skin care goods. 6
TTABVUE 13, 14, 9 TTABVUE 7. Applicant argues that consumers prefer to
purchase third-party skin care products at independent tanning salons and purchase
private label skin care products at franchises and multiple salons because they are
aware that private label products are a “key staple of franchises and multiple salons
operators” that can maintain their quality and exclusivity. 6 TTABVUE 13, 14, 9
TTABVUE 7. Applicant argues that “consumers are well aware of the differences in
size, locations, product and service offerings, high quality control, level of service, and
amenities between tanning salon products and services offered by tanning franchises
operated by Applicant and Applicant’s franchisees and those offered by independent
tanning salons operated by individuals.” 9 TTABVUE 7.
The Examining Attorney argues that even knowledgeable or sophisticated
consumers can be confused, and “there is no evidence of record substantiating that
tanning consumers are brand loyal” but even if they are, they are more likely to be
confused given that “consumers encounter[] tanning salon services and tanning skin
care products bearing highly similar marks.” 8 TTABVUE 16-17.
Because there are no limitations as to price points or classes of purchasers in the
description of goods and services in Applicant’s application or the cited registrations,
it is presumed that Applicant’s goods and Registrants’ services are available to all
classes of purchasers for those goods and services, which we find would include
unsophisticated consumers. Those classes of consumers are those interested in
tanning services and associated skincare products used in connection with tanning.
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When relevant consumers include both discerning purchasers and the general public,
precedent requires that we base our decision on the least sophisticated potential
purchasers. Stone Lion, 110 USPQ2d at 1163.
Even if Applicant’s skin care products and Registrants’ tanning services may be
offered to knowledgeable, sophisticated consumers, in view of the nature of the goods
and services and the lack of limitations in the classes of purchasers and price points,
we must presume that they would also be purchased by the general consumer,
including ordinary purchasers of such goods and services. The evidence reflects that
goods such as those identified by Applicant are available at very modest price po ints
that would not involve a high degree of care in purchasing. There is no evidence that
ordinary consumers of skin care products used in connection with tanning or tanning
services exercise a heightened degree of care when purchasing such goods and
services. We find this DuPont factor to be neutral.
D. Actual Confusion
The question of actual confusion is addressed in DuPont factors seven and eight
and looks at the “nature and extent of any actual confusion” and the “length of time
during and conditions under which there has been concurrent use without evidence
of actual confusion.” DuPont, 177 USPQ at 567.
Applicant argues that there have been no instances of actual confusion between
Applicant’s goods and the cited marks’ services for nearly a year, even though there
is a “lengthy time of concurrent use in the same geographic markets and the broad
tanning industry.” 6 TTABVUE 12-13.
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However, the fact that an applicant in an ex parte case is unaware of any instances
of actual confusion is generally entitled to little probative weight in the likelihood of
confusion analysis. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003); In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529
(CCPA 1973) (self-serving testimony of appellant’s corporate president’s
unawareness of instances of actual confusion was not conclusive that actual confusion
did not exist or that there was no likelihood of confusion).
Moreover, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not compelling in support of a
finding of no likelihood of confusion, particularly in an ex parte proceeding in which
the owner of the cited registration cannot appear. Nor is it usually possible to
determine that there has been any significant opportunity for actual confusion to
have occurred, especially in this case where Applicant has indicated that it has only
used its mark for “at least a year of concurrent use.” 6 TTABVUE 12-13. See, e.g., In
re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). Thus, we cannot conclude
from the alleged lack of instances of actual confusion that confusion is not likely to
occur.
Accordingly, we find this DuPont factor to be neutral.
II. Conclusion
We have considered all of the arguments and evidence of record and all relevant
DuPont factors. We find the cited marks are similar to Applicant’s mark, the goods
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and services are similar, move in the same channels of trade, and are offered to the
same class of consumers. As a result we find confusion likely.
Decision: The refusal to register Applicant’s mark
under Section 2(d) is affirmed.