Smith & Vandiver Corp.

Trademark Trial and Appeal Board

Nov 29, 2011

No. 77492026 (T.T.A.B. Nov. 29, 2011)

Hearing: Mailed:
July 19, 2011 November 29, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Smith & Vandiver Corp.
________

Serial No. 77492026
_______

Brent A. Capehart of Bowers Law Firm for Smith & Vandiver
Corp.

Jessica A. Powers, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Bergsman, Wellington and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Applicant seeks to register the mark SKIN NUTRITION,
in standard character form, on the Principal Register under
the provisions of Section 2(f) with a disclaimer of the
word “Skin” for the goods set forth below:
Non medicated toilet preparations,
namely, hand and body soaps, skin
cleansers, toners, hand creams and
moisturizers, body lotions and creams,
cosmetics, namely, facial moisturizers,
toners, facial cleansers, skin
treatments, namely, non-medicated skin
care preparations, facial masks, eye
This Opinion is Not a
Precedent of the TTAB
Serial No. 77492026
2
creams, facial serums, exfoliating
facial scrubs, in Class 3.

The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), in view of the two prior
registrations, owned by different entities, listed below:1
1. Registration No. 2921924 for the mark NATURE’S
SKIN NUTRITION, in typed drawing form, for the goods listed
below:
Non-medicated toilet preparations,
namely, hand and body soaps, skin
cleaners, toners, hand creams and
moisturizers, body lotions and
conditioners, skin creams, skin lotions
and skin moisturizers; cosmetics,
namely, facial moisturizers, toners,
facial cleansers; skin treatments,
namely, non-medicated skin care
preparations; eye creams; soaps, hair
treatments, namely non-medicated hair
care preparations; hair styling
preparations, shampoos and
conditioners, in Class 3.2

Registrant disclaimed the exclusive right to use the term
“Skin Nutrition.”

1 The examining attorney also initially refused registration on
the ground that the mark SKIN NUTRITION is merely descriptive.
During the prosecution of the application, applicant amended its
application to seek registration under the provisions of Section
2(f) (acquired distinctiveness) with a disclaimer of the word
"skin" to overcome the descriptiveness refusal. Whether
applicant's mark has acquired distinctiveness, especially in
light of the two cited registrations and evidence of third-party
use of the term “Skin Nutrition,” is not before us.
2 Issued February 1, 2005; Sections 8 and 15 affidavits accepted
and acknowledged.
Serial No. 77492026
3
2. Registration No. 3262298 for the mark NUTRIMAX
SKIN NUTRITION, in standard character form, for “non-
medicated skin care preparations,” in Class 3.3 Registrant
disclaimed the exclusive right to use the term “Skin
Nutrition.”
Our determination of the refusal under Section 2(d)
must be based on an analysis of all of the probative facts
in evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). “The
likelihood of confusion analysis considers all DuPont
factors for which there is evidence of record but ‘may
focus ... on dispositive factors.’” Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003
(Fed. Cir. 2002) (citations omitted). In many cases, two
dispositive considerations are the similarities of the
marks and the similarities of the goods and services. See,
e.g., 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

3 Issued July 10, 2007.
Serial No. 77492026
4
the goods and differences in the marks”). Accordingly, we
review the evidence of record and the arguments concerning
the import of such evidence in light of such
considerations.
A. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

Applicant’s goods are in part identical to the goods
listed in the cited registrations. The fact that
applicant’s description of goods includes additional
products does not change this finding. It is sufficient
for a finding of likelihood of confusion if the relatedness
is established for any item encompassed by the
identification of goods in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Because the goods are in part identical, we must
presume that the channels of trade and classes of
purchasers are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Serial No. 77492026
5
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers”).
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression and the strength of registrant’s
mark.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, applicant’s goods are in
part identical to registrants’ goods, the degree of
similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity
between the goods. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Real Estate One, Inc. v. Real Estate 100
Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI
Serial No. 77492026
6
Division of E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
Moreover, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of overall commercial impression so that confusion as
to the source of the goods offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1835, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992).
The marks are similar in terms of sight, sound,
meaning and commercial impression to the extent that they
all include the term “Skin Nutrition.” However, the marks
are different because the registered marks include a prefix
term: NATURE’S SKIN NUTRITION and NUTRIMAX SKIN NUTRITION.
Thus, the issue before us is whether the absence of a
prefix term in applicant’s mark is sufficient to
distinguish it from the registered marks. For the reasons
stated below, we find that the differences in the marks
outweigh the similarities.
This issue is similar to the issue we face when a
house mark is added to otherwise similar product marks.
Serial No. 77492026
7
There is no per se rule concerning whether the addition of
a house mark (e.g., NATURE’S or NUTRIMAX) would or would
not be sufficient to differentiate the marks from the
common elements of the marks (e.g., SKIN NUTRITION). New
England Fish Co. v. Hervin Co., 511 F.2d 562, 184 USPQ 817,
819 (CCPA 1975). We note that this case is somewhat
different because applicant seeks to register the common
element (i.e., absent the house mark of registrants). More
frequently, applicant seeks to register a mark that
comprises a previously-registered term with the addition of
applicant’s own house mark or other matter. In any event
and in all such cases, we must consider the entire marks,
including the presence of any house mark in light of the
evidence of record.
The Board has previously described the different
effects the addition (or subtraction) of a house mark can
have in the likelihood of confusion analysis:
[S]uch addition may actually be an
aggravation of the likelihood of
confusion as opposed to an aid in
distinguishing the marks so as to avoid
source confusion. On the other hand,
where there are some recognizable
differences in the asserted conflicting
product marks or the product marks in
question are highly suggestive or
merely descriptive or play upon
commonly used or registered terms, the
addition of housemark and/or other
material to the assertedly conflicting
Serial No. 77492026
8
product mark has been determined
sufficient to render the marks as a
whole sufficiently distinguishable.

In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985)
(citations omitted) (applicant’s LE CACHET DE DIOR
confusingly similar to CACHET because applicant failed to
prove that the word “cachet” was highly suggestive,
descriptive or commonly used or registered) (Emphasis
added). See also Nike Inc. v. WNBA Enterprises LLC, 85
USPQ2d 1187, 1201-1202 (TTAB 2007) (S and a star design for
athletic bags and clothing is likely to cause confusion
with S STARTER and star design for identical products).
Compare with Knight Textile Corp. v. Jones Investment Co.,
75 USPQ2d 1313 (TTAB 2005) (NORTON MCNAUGHTON ESSENTIALS
for ladies’ sportswear not likely to cause confusion with
ESSENTIALS for women’s clothing); and In re S. D. Fabrics,
Inc., 223 USPQ 54, 55 (TTAB 1984) (“designers/fabric” and
design for retail store services in the field of fabrics,
wall hangings, buttons and accessories is not likely to
cause confusion with DAN RIVER DESIGNER FABRICS and design
for textile fabrics).
In Knight, the Board found that the word “essentials”
was highly suggestive when used in connection with
clothing. As evidence of the highly suggestive nature of
the word “essentials,” the Board relied on a dictionary
Serial No. 77492026
9
definition of “essentials” as connoting that “the clothing
items sold under the marks are basic and indispensable
components of, or ‘essentials’ of, one’s wardrobe,” as well
as 23 third-party registrations, owned by 21 different
entities, that include the word “essentials” as part of the
mark. Based on the evidence, the Board found that
purchasers would be able to distinguish among the various
“essential” marks by looking to other elements of the
marks. Knight Textile Corp. v. Jones Investment Co., 75
USPQ2d at 1316.
In this case, applicant amended its application to
seek registration under the provisions of Section 2(f) of
the Trademark Act (acquired distinctiveness) and to
disclaim the exclusive right to use the word “Skin” to
overcome a descriptiveness refusal pursuant to Section
2(e)(1) of the Trademark Act. For procedural purposes, a
claim of distinctiveness under §2(f), whether made in the
application as filed or in a subsequent amendment, may be
construed as conceding that the matter to which it pertains
is not inherently distinctive and, thus, not registrable on
the Principal Register absent proof of acquired
distinctiveness. See, e.g., Yamaha Int’l Corp. v. Hoshino
Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB
Serial No. 77492026
10
1990); In re Prof’l Learning Ctrs., Inc., 230 USPQ 70, 71
(TTAB 1986); In re Chopper Indus., 222 USPQ 258, 259 (TTAB
1984).
During the prosecution of the cited registrations,
both registrants agreed to disclaim the term “Skin
Nutrition” when the examining attorneys required a
disclaimer of that term on the ground that “Skin Nutrition”
is merely descriptive when used in connection with skin
care products.4 Under these circumstances, the disclaimers
of the term “Skin Nutrition” by the registrants constitute
further evidence regarding the merely descriptive nature of
that term, as applied to the goods in connection with which
they are registered, and an acknowledgement of the lack of
an exclusive right therein at the time of the disclaimer.
In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005)
(“it has long been held that the disclaimer of a term
constitutes an admission of the merely descriptive nature
of that term … at the time of the disclaimer”). See also

4 Applicant’s Brief, Exhibits A and B. Exhibits A and B are
copies of the relevant Office actions requiring the registrants
to disclaim the exclusive right to use “Skin Nutrition” on the
ground that the term is merely descriptive. Although the
exhibits were not timely filed, the examining attorney did not
object to the exhibits and referenced applicant’s argument in her
brief (“the applicant presents arguments that the wording ‘SKIN
NUTRITION’ is ‘weak’ based on disclaimers of the wording in each
registration”). (Examining Attorney Brief, p. 4). Accordingly,
we will treat the exhibits as being of record.
Serial No. 77492026
11
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453
F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) (disclaimer is an
admission of descriptiveness at the time the disclaimer was
made); In re Interco Inc., 29 USPQ2d 2037, 2038 n.3 (TTAB
1993) (“It has been held that the disclaimer of a term
constitutes both an admission of the merely descriptive
nature of such term, as applied to the goods or services in
connection with which it used, and an acknowledgement of
the lack of an exclusive right therein at the time of the
disclaimer.”). Thus, the dominant portion of the marks in
the cited registrations are the words “Nature’s” in the
mark NATURE’S SKIN NUTRITION and “Nutrimax” in the mark
NUTRIMAX SKIN NUTRITION.
In addition, in the April 20, 2009 Office action, the
examining attorney submitted third party use of the term
“Skin Nutrition” in connection with skin care products.
1. ASHLEY SKIN NUTRITION website
(ashleyskinnutrition.com) advertising the sale of “Skin
Nutrition Systems.”
2. Bliss website (blissworld.com) advertising the
SKIN NUTRITION ++ brand of cosmetics designed “around a
synergistic face, body and nutrition wellness concept.”
3. EVITAMINS website (evitamins.com) selling “Hair &
Skin Nutrition by Enzymatic Therapy.”
Serial No. 77492026
12
Hair & Skin Nutrition® provides a
balanced combination of vitamins,
minerals, and other natural factors to
nutritionally support the body systems
involved in maintaining healthy skin
and hair.

4. An article posted in the SmartSkinCare.com
website.
Does nutrition make a different in skin
rejuvenation

… While a skin cream may provide a
number of important substances, it is
never enough to ensure a proper, all-
around skin nutrition.

* * *

We discuss these issues in other
articles of this section and, in
further detail, in the Skin & Nutrition
Infopack.

5. An article posted in the American Chronicle
website (americanchroncicle.com) on November 7, 2007)
entitled “Skin Nutrition – Minerals For Your Skin.”
Based on this evidence, we find that purchasers will
be able to distinguish the marks because the common
elements are descriptive and consumers will perceive the
term “Skin Nutrition” in the marks NATURE’S SKIN NUTRITION
and NUTRIMAX SKIN NUTRITION as ordinary descriptive speech,
not as trademarks. Hence applicant’s amendment to seek
registration pursuant to the provisions of Section 2(f)
coupled with registrants’ disclaimers of the exclusive
Serial No. 77492026
13
right to use “Skin Nutrition” are significant in this case.
That a descriptive or generic term is given little weight
in the likelihood of confusion analysis reflects
marketplace reality because consumers give little source
indicating significance to descriptive terms. There is no
reason to believe, and there is no evidence on the point,
that consumers are likely to perceive the term “Skin
Nutrition” in the registered marks as anything other than a
type, not a brand, of skin care preparation. To hold
otherwise gives registrants the exclusive right to use the
term, “Skin Nutrition” when it is a privilege that they
hold in common with all others, including applicant.
In view of the foregoing, we find that the marks are
not similar in terms of their appearance, sound, meaning
and commercial impression.
C. Balancing the factors.
Having considered the evidence of record as it
pertains to the relevant likelihood of confusion factors,
we find that confusion is unlikely to result from the
contemporaneous use of NATURE’S SKIN NUTRITION and NUTRIMAX
SKIN NUTRITION and applicant’s SKIN NUTRITION mark, even
though the marks are used on identical products that move
in the same channels of trade and are sold to the same
classes of consumers. We find that dissimilarity of the
Serial No. 77492026
14
marks, simply outweighs the evidence as to the other
factors. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1889), aff’d, 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991).
Decision: The refusal of registration under Section
2(d) is reversed.