SunFeather Natural Soap Company, Inc.

Trademark Trial and Appeal Board

Sep 25, 2008

No. 76480170 (T.T.A.B. Sep. 25, 2008)

Mailed:
25 September 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SunFeather Natural Soap Company, Inc.
________

Serial No. 76480170
_______

Dana F. Bigelow of Marjama Muldoon Blasiak & Sullivan LLP
for SunFeather Natural Soap Company, Inc.

Michael S. Levy, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Hairston, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 12, 2002, applicant SunFeather Natural
Soap Company, Inc. applied to register the mark BUG OFF (in
typed or standard character form) on the Principal Register
for goods ultimately identified as follows:
Cosmetics and personal care products, namely
combination soap and insect repellent1 in liquid or
solid bar form for use on hands, face, hair and body;

1 The term “repellent” can also be spelled “repellant.” For
consistency sake, we have chosen to use the “repellent” spelling
regardless of the way the term was spelled in the original
source.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76480170
2
combination body balms and creams with insect
repellent composed of oils, waxes, and essential oils
for personal use in class 3.

Insect repellents in the form of face and body spray
composed of essential oils in an oil or
alcohol/ethanol base in class 5.2

The examining attorney3 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of two registrations for the
mark BUG OFF. The first is for BUG-OFF in typed or
standard character form,4 and the other is for the words BUG
OFF! with the design shown below.5

Both registrations are for virtually identical goods.
The ‘898 registration’s goods are “wrist bands for
repelling insects” and the ‘024 registration’s goods are
identified as “insect repelling wrist bands.” Both goods

2 Serial No. 76480170. The application contains allegations of
dates of first use anywhere and in commerce for both classes of
goods as July 20, 2001.
3 The current examining attorney was not the original examining
attorney in this case.
4 Registration No. 2369898, issued July 25, 2000 (Section 8
accepted).
5 Registration No. 3303024, issued October 2, 2007.
Ser No. 76480170
3
are classified in class 5 and the current owner of both
registrations is identified as S.C. Johnson & Son, Inc.
When the refusal was made final, applicant filed this
appeal.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods [or services]
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by looking at the “first DuPont factor
[which] requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Ser No. 76480170
4
Cir. 2005) (quoting du Pont, 177 USPQ at 567). The typed
marks are virtually identical, BUG OFF and BUG-OFF. The
only difference between the marks is the presence of a
hyphen in registrant’s mark. Applicant argues that the
hyphen in the mark creates marks that are “substantially
different” (Brief at 3) in appearance. We disagree. A
“[s]ide by side comparison is not the test.” Grandpa
Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573, 574 (CCPA 1973). This trivial difference,
even if it were remembered, would have little significance.
In re Sears, Roebuck and Co., 2 USPQ2d 1312, 1313 (TTAB
1987) (“Moreover, applicant's mark ‘CROSS-OVER’ and
registrant's mark ‘CROSSOVER’ are identical in sound, and
are also identical in appearance but for the inclusion in
applicant's mark of a hyphen, which, for purposes herein,
is of no legal significance”) and Charrette Corp. v.
Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042
(TTAB 1989) (“It is also quite obvious that the marks are
identical except for the division of registrant's mark by a
hyphen between the syllables. We therefore, believe that
confusion would be likely should these marks be applied to
the same or related goods”). Accord China Healthways
Institute Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d
1123, 1125 (Fed. Cir. 2007) (“And the use of a square dot
Ser No. 76480170
5
over the capital ‘I’ in Wang’s mark, instead of the
circular dot atop two arms in the Institute’s mark, is
unlikely to prevent customer confusion over the source of
the products to which these marks pertain”).
Obviously, the marks BUG OFF and BUG-OFF would be
pronounced identically. In addition, both marks could mean
literally “bug off” or they can also refer to the same
exclamation: “Get out!” or “Go Away!” Richard A. Spears,
Slang American Style, (NTC Publishing Group 1997).6
Therefore, both marks would have the same meaning and any
difference in appearance and commercial impression is
slight. As a result, we conclude that the marks BUG OFF
and BUG-OFF are virtually identical in sound, appearance,
meaning, and commercial impression.
We add that the marks BUG OFF and BUG OFF! and bug
design are also very similar. Applicant argues that the
exclamation point, the lack of a space in registrant’s
design mark, and the different orientation of the letters
in the marks are significant. Brief at 3. However,
applicant’s mark is in standard character form and we must
assume that it could be displayed with any reasonable

6 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).

Ser No. 76480170
6
stylization including the stylization of the letters in
registrant’s ‘024 registration (without the design).
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983) (“[T]he argument concerning a difference
in type style is not viable where one party asserts rights
in no particular display. By presenting its mark merely in
a typed drawing, a difference cannot legally be asserted by
that party. Tomy asserts rights in SQUIRT SQUAD regardless
of type styles, proportions, or other possible variations.
Thus, apart from the background design, the displays must
be considered the same”).
To the extent that the registered mark could be viewed
as one word, we add that the absence of the space does not
significantly change the impression created by the marks.
Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52,
54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed.
Cir. 1984) (“There is no question that the marks of the
parties [STOCKPOT and STOCK POT] are confusingly similar.
The word marks are phonetically identical and visually
almost identical”) and In re Best Western Family Steak
House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be
little doubt that the marks [BEEFMASTER and BEEF MASTER]
are practically identical”). Also, in this case, the
larger letters B and O would emphasize the individual words
Ser No. 76480170
7
in the mark. Furthermore, the addition of the exclamation
point in registrant’s mark is hardly an important
difference. “[M]inor design features do not necessarily
obviate likelihood of confusion arising from consideration
of the marks in their entireties. Moreover, in a composite
mark comprising a design and words, the verbal portion of
the mark is the one most likely to indicate the origin of
the goods to which it is affixed.” CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983).
Also, while applicant points to the presence of the
design in the cited registration, the design of the bug is
hardly a distinction that purchasers would rely on to
distinguish the goods. Both applicant’s and registrant’s
goods repel bugs and the word portions of the marks would
be the dominant part of both marks because it would be how
the goods are referenced or ordered. The design in
registrant’s mark would simply reinforce the connotation of
the BUG OFF words in the mark. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without
a doubt the word portion of the two marks are identical,
have the same connotation, and give the same commercial
impression. The identity of the words, connotation, and
commercial impression weighs heavily against the
applicant”). When we compare the marks in their
Ser No. 76480170
8
entireties, the common word portion of the marks, BUG OFF,
outweighs any differences and the marks are, if not
virtually identical, at least very similar in sound,
appearance, meaning, and commercial impression.
Next, we consider whether the goods are related. It
“has often been said that goods or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of each
parties' goods or services.” In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
The question then is whether consumers would believe
that there is some relationship between the source of
registrant’s insect repelling wrist bands and applicant’s
combination soap and insect repellent in liquid or bar
soap; combination body balms and creams with insect
Ser No. 76480170
9
repellent, and insect repellent sprays. Applicant argues
that the “goods are not identical, competitive, or even
closely related in nature.” Brief at 4. Furthermore,
“applicant’s goods are cosmetics and … they are designed to
be rubbed, poured, sprinkled, or sprayed on to the human
body… The registrant’s goods are very narrowly defined as
wristbands. As such, they are meant to be affixed,
attached, or ‘clamped’ onto the body.” Brief at 5.
The examining attorney has included evidence in the
form of use-based, third-party registrations that show that
insect repellents and cosmetics and personal care products,
regardless of whether or not they contain insect
repellents, are registered under a common mark. These
registrations suggest that insect repellents and cosmetics
and personal care products are associated with the same
source.
The registrations show that entities have registered
their marks for both television and radio broadcasting
services. Although these registrations are not
evidence that the marks shown therein are in use or
that the public is familiar with them, they
nevertheless have probative value to the extent that
they serve to suggest that the services listed
therein, including television and radio broadcasting,
are of a kind which may emanate from a single source.
See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB
1988)").

Ser No. 76480170
10
In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d
1214, 1217-18 (TTAB 2001).
The goods in these third-party registrations include:
No. 2635573 – skin care products, skin crèmes, body
lotions, nasal spray preparations, and insect
repellents

No. 2566086 – cosmetics, skin treatments, and insect
repellents

No. 2840796 – skin creams, skin lotions, and insect
repellents

No. 2694040 – soaps and insect repellents and electric
devices to emanate perfume and insecticides substances

Furthermore, we agree with the examining attorney that
“applicant’s goods serve the same function as registrant’s
goods … because both applicant and registrant provide
related insect repellent products.” Brief at 8. Indeed,
both applicant’s and registrant’s products use citronella
and they are both DEET-free. www.sunfeather.com and
www.kaz.com. The fact that registrant’s goods are worn on
the body, while applicant’s repellents are applied to the
body, does not mean that these goods, which perform the
same function of protecting individuals from insects, are
not related. We note that applicant’s own website itself
indicates that insect repellents come in a variety of forms
such as: soap, a “bug rub,” oil, liquid shampoo, and soy
candles. www.sunfeather.com. Applicant’s identified
Ser No. 76480170
11
insect repellent products are likely to be viewed as
additional products that are associated with registrant’s
wristbands with insect repellent. Therefore, we conclude
that the goods of applicant and registrant are related.
In addition, we cannot find that there are any
significant differences in the channels of trade for these
different types of insect repellents. Purchasers looking
for an insect repellent that would not require applying a
lotion, cream, or soap could purchase registrant’s product
as an alternative or as additional protection. Also, it is
likely that alternative insect repellent products would be
offered for sale in the same locations in stores or on
websites on the internet. While applicant argues that it
sells its products through “natural/holistic and specialty
trade shows” and it believes that registrant’s goods are
marketed “only by way of the internet,” we cannot limit our
analysis to only these narrow channels of trade. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981)(“[W]here the goods in
a cited registration are broadly described and there are no
limitations in the identification of goods as to their
nature, type, channels of trade or classes of purchasers,
it is presumed that the scope of the registration
encompasses all goods of the nature and type described,
that the identified goods move in all channels of trade
Ser No. 76480170
12
that would be normal for such goods, and that the goods
would be purchased by all potential customers”). See also
Morton-Norwich Products, Inc. v. N. Siperstein, Inc., 222
USPQ 735, 736 (TTAB 1984) (“Since there is no limitation in
applicant's identification of goods, we must presume that
applicant's paints move in all channels of trade that would
be normal for such goods, and that the goods would be
purchased by all potential customers”). Under these
circumstances, there is no reason to conclude that these
goods would not be sold through the same channels of trade
to the same purchasers seeking an insect repellent.
We add that the record indicates that applicant’s BUG
OFF! Products range in price from $6.50 to $13 and
registrant’s wrist bands cost $15 or less. www.kaz.com and
www.sunfeather.com. The relatively inexpensive nature of
the products is some evidence that the purchasers of these
products would not be expected to exercise more than
reasonable care when purchasing applicant’s and
registrant’s goods.
Finally, applicant points to copies of twelve
“registrations/applications [that] are ‘live’ and are shown
to be used with different products and classes (i.e. 8
different classes). Accordingly, the [applicant] submit[s]
that the mark is not so distinctive as to allow for the
Ser No. 76480170
13
registrant to exclude use of the mark by others in areas
outside of its relatively narrow range of use.” Brief at
6. We point out that even if this were true, applicant’s
insect repellents would be within the narrow range of use
for registrant’s insect repellent wrist bands. Also, even
if these registrations did demonstrate that the marks in
the cited registrations were weak, weak marks nonetheless
“are entitled to protection against registration of similar
marks, especially identical ones, for related goods and
services.” In re Colonial Stores, 216 USPQ 793, 795 (TTAB
1982); In re The Clorox Co., 578 F.2d 305, 198 USPQ 337,
341 (CCPA 1978) (ERASE for a laundry soil and stain remover
held confusingly similar to STAIN ERASER, registered on the
Supplemental Register, for a stain remover).
The registrations and applications here are
particularly unhelpful for applicant’s position for several
reasons. Applicant has included copies of the two cited
registrations and an application apparently owned by the
registrant (No. 78208245) among its evidence. Three
attachments consist of other applications owned by
applicant and the fourth is an intent–to-use application
for equipment for horses. Pending applications are only
evidence that the application was filed. In re Phillips-
Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)
Ser No. 76480170
14
(“While applicant also submitted a copy of a third-party
application …, such has no probative value other than as
evidence that the application was filed”). See also
Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203
USPQ 1090, 1092, n.5 (TTAB 1979) (“The filing of a notice
of reliance upon third-party applications is a futile act
because copies of those applications or the publication
thereof in the Official Gazette is evidence only of the
filing of the applications and nothing else”). The
remaining registrations for deflectors for motor vehicles,
windshield cleaner solution, and pest control services and
pest control distributorship services are much less
relevant to the goods of applicant and registrant. Our
principal reviewing court has explained that: “Much of the
undisputed record evidence relates to third party
registrations, which admittedly are given little weight but
which nevertheless are relevant when evaluating likelihood
of confusion. As to strength of a mark, however,
registration evidence may not be given any weight.” Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992) (emphasis in original).
Similarly, applicant’s evidence of a few uses for similar
marks on less related products such as books, rugs, and
bedding products hardly establishes that the cited
Ser No. 76480170
15
registrations are entitled to only a narrow scope of
protection.
When we consider all the evidence of record in
relation to the du Pont factors, we find that applicant’s
mark BUG OFF is virtually identical or very similar to the
cited registrations for the marks BUG-OFF and BUG OFF! and
design. The goods of applicant and registrant are related
inasmuch as they are insect repellents in various forms for
personal use. Also, the purchasers and channels of trade
are at least overlapping. Therefore, we conclude that
there is a likelihood of confusion in this case.

Decision: The examining attorney’s refusal to
register applicant’s mark BUG OFF for the identified goods
on the ground that it is likely to cause confusion with the
cited registered marks used in connection with the
identified goods under Section 2(d) of the Trademark Act is
affirmed.