Spa de Soleil, Inc.

Trademark Trial and Appeal Board

Sep 21, 2007

No. 76642151 (T.T.A.B. Sep. 21, 2007)

Mailed: September 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spa de Soleil, Inc.
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Serial No. 76642151
_______

Thomas I. Rozsa of Rozsa Law Group for Spa de Soleil, Inc.

Pamela Y. Willis, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Walsh, Cataldo and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Spa de Soleil, Inc. to
register the mark shown below on the Principal Register for
“non-medicated skin care products and facial and body
treatments, namely, skin creams, facial creams, facial
lotions, facial cleansers, facial masks, body creams, body
lotions, body cleansers and body masks” in International
Class 3; and “medicated skin care products and facial and
body treatments, namely, skin creams, facial creams, facial
lotions, facial cleansers, facial masks, body creams, body
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76642151
2
lotions, body cleansers, and body masks” in International
Class 5.1

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on or in connection with its
goods, so resembles the mark THE FUTURE OF SKIN CARE,
previously registered on the Principal Register in typed or
standard character form for “face and body wash; skin
moisturizer; eye cream; glycolic acid, collagen, and
vitamin c and other skin patches for cosmetic purposes and
for use on blemishes” in International Class 3 and
“preparations for the treatment of acne, namely, patches,
cleansers, and gels; and vitamin c patch for treating
wrinkles” in International Class 5,2 as to be likely to
cause confusion.

1 Application Serial No. 76642151 was filed on July 1, 2005,
based upon applicant’s assertion of January 1, 1999 as the date
of first use of the mark anywhere and in commerce for both
classes of goods. In addition, applicant claimed ownership of
Registration No. 2404716 for the mark PHARMASKINCARE for the same
goods.
2 Registration No. 2457739 issued on June 5, 2001.

Ser No. 76642151
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When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & 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, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
In its briefing of the issue under appeal, applicant
focuses its arguments exclusively on various aspects of the
similarity or dissimilarity between its mark and the mark
in the cited registration. We turn then to the first du
Pont factor, i.e., whether applicant’s mark and
registrant’s mark are similar or dissimilar when viewed in
Ser No. 76642151
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their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note
initially that the test under the first du Pont factor 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 their overall
commercial impression that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). We
further note that under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. See Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
In this case, applicant’s mark, PHARMASKINCARE “THE
FUTURE OF SKIN” in stylized form is similar to the
registered mark THE FUTURE OF SKIN CARE in that both
contain the identical wording THE FUTURE OF SKIN.
Applicant’s mark contains the additional wording
Ser No. 76642151
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PHARMASKINCARE while registrant’s mark contains the
additional word CARE. However, these elements are not
entirely dissimilar. PHARMASKINCARE is comprised of the
terms PHARMA, SKIN and CARE. As noted above, SKIN CARE is
an element of registrant’s mark. As a result, the term
PHARMA in applicant’s mark is the only term unique to
either mark. That is to say, PHARMA is the only element of
applicant’s mark that is entirely dissimilar from the
elements comprising registrant’s mark, aside from the
quotation marks which are insufficient to create a distinct
commercial impression. The wording THE FUTURE OF SKIN in
applicant’s mark is identical in sound and nearly identical
in appearance to that same phrase in registrant’s mark. In
addition, the wording SKINCARE as it forms part of
PHARMASKINCARE is identical in sound and highly similar in
appearance to those same terms in registrant’s mark. As a
result we find that, viewing the marks as a whole, the
similarities between the marks in appearance and sound
outweigh the dissimilarities. Further, both marks suggest
that the goods identified thereby offer advancements with
regard to the skin and its care. Thus, we find that the
marks are highly similar in terms of overall connotation
and convey highly similar commercial impressions.
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Applicant contends that the examining attorney
improperly dissected its mark in analyzing the similarities
between it and the mark in the cited registration.
However, and as noted above, we find that when the marks
are viewed in their entireties the similarities in
appearance, sound, connotation and commercial impression
outweigh the differences. See Palm Bay Imports, Inc. v.
Veuve Clicquot, supra. As such, applicant’s arguments
regarding the asserted dissection of its mark are
unavailing.
Applicant further argues that “THE FUTURE OF SKIN” in
its mark “is a fairly descriptive generic term” (brief, p.
3) and that, as a result, PHARMASKINCARE is the dominant
portion of its mark. However, applicant presented no
evidence that “THE FUTURE OF SKIN” is a descriptive or
generic term as applied to its goods. Further, applicant
did not offer to disclaim such wording as descriptive, nor
did the examining attorney request such a disclaimer.
Neither are we persuaded by applicant’s assertion that
because its prior Registration No. 2404716 for
PHARMASKINCARE has attained incontestable status under
Section 15 of the Trademark Act, PHARMASKINCARE is the
dominant portion of its mark. The fact that applicant owns
an incontestable registration for PHARMASKINCARE does not
Ser No. 76642151
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render the wording “THE FUTURE OF SKIN” any less
distinctive or otherwise diminish its significance in the
mark under consideration herein. Moreover, there is no
evidence of record that registrant’s mark THE FUTURE OF
SKIN CARE is a weak mark or otherwise is not entitled to a
broad scope of protection.
Finally, applicant, with its response to the first
Office action, submitted a list of third-party
registrations for marks unrelated to its involved mark or
the mark in the cited registration. Applicant argues that
these registrations illustrate the absence of likelihood of
confusion “when the prior marks incorporated were found to
be suggestive, or alternatively, conveyed a different
meaning as used alone” (brief, p. 7). To make third-party
registrations of record, applicant must submit a copy of
the registration or a printout from the USPTO's electronic
database prior to the briefing stage of the case. In re
Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974) (“[T]he
submission of a list of registrations is insufficient to
make them of record.”). However, the examining attorney
has not objected to this listing of registrations
(including the marks) or advised applicant that the listing
is insufficient to make the registrations of record at a
point when applicant could have corrected the error. See
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TBMP §1208.02 (2d ed, 2004 and authorities cited therein).
We therefore have considered the registrations, but only to
the extent of the information provided.
In this case, applicant’s listing of registrations has
very limited probative value because none of the subject
marks contain any elements in common with applicant’s or
registrant’s mark, which thus creates a completely
different commercial impression; and because there is no
information regarding the goods and/or services identified
thereby.
In this case, we find that consumers who are familiar
with the mark, THE FUTURE OF SKIN CARE, used in connection
with registrant’s goods, and then see the mark
PHARMASKINCARE “THE FUTURE OF SKIN” in stylized form used
in connection with applicant’s goods, are likely to assume
that the owner of the mark THE FUTURE OF SKIN CARE has
simply added PHARMASKINCARE when using the mark in
connection with applicant’s goods. In other words,
consumers are likely to view the marks as variations of
each other, but indicating a single source. Thus, despite
the fact that applicant’s mark includes the word
PHARMASKINCARE, the marks, taken as a whole, are highly
similar in appearance, sound, connotation and commercial
Ser No. 76642151
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impression. Accordingly, this du Pont factor favors a
finding of likelihood of confusion.
The Goods
Turning now to our consideration of the identified
goods, we note that it is not necessary that the goods at
issue be the same as, or even similar or competitive, or
even that they move in the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient instead that the respective goods are related in
some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s various medicated and non-
medicated “skin care products and facial and body
treatments” – including creams, lotions, cleansers and
masks - are related on their face at least to registrant’s
“face and body wash,” “skin moisturizer” and “eye cream” in
that these goods are used for the cleaning, treatment and
protection of the skin. In short, all of these products,
as identified, are used for general skin care. We note
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that there is no limiting language in either applicant’s or
registrant’s identification of goods to indicate that the
goods recited therein are restricted for use by a
particular gender, age group, or type of skin. As such,
both applicant’s goods as well as those of registrant are
presumed to be appropriate for general use by any potential
consumer.
Finally, we note that applicant does not argue in its
brief that the goods are dissimilar. Accordingly, this du
Pont factor also favors a finding of likelihood of
confusion.
Channels of Trade
Neither applicant’s goods nor those of registrant
contain any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. It is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
Ser No. 76642151
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regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also 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 be decided on the basis of the
respective descriptions of goods.”) Thus, registrant’s
goods are presumed to move in all normal channels of trade
and be available to all classes of potential consumers,
including consumers of applicant’s goods. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Accordingly, this
du Pont factor further favors a finding of likelihood of
confusion.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
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registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.