Truescents LLCv.Ride Skin Care, L.L.C.

Trademark Trial and Appeal Board

Nov 14, 2006

No. 91158556 (T.T.A.B. Nov. 14, 2006)

Mailed:
Nov. 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Truescents LLC
v.
Ride Skin Care, L.L.C.
_____

Opposition No. 91158556
to application Serial No. 76485733
filed on January 27, 2003
_____

Matthew J. Booth of Matthew J. Booth & Associates PLLC for
Truescents LLC.

Joseph R. Meaney of Ellis & Venable PC for Ride Skin Care,
L.L.C.
______

Before Hohein, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION
Ride Skin Care, L.L.C., applicant herein, seeks
registration on the Principal Register of the mark depicted
below
THIS OPINION IS CITABLE
AS PRECEDENT OF THE
TTAB
Opposition No. 91158556
2

for goods identified in the application as “non-medicated
skin care products namely sunscreen, skin cleansers, skin
moisturizers, pre-moistened cosmetic wipes and lip balms.”
Applicant has disclaimed GENUINE SKIN CARE apart from the
mark as shown. The application is based on intent-to-use
under Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Truescents LLC, opposer herein, has opposed
registration of applicant’s mark. As grounds for
opposition, opposer alleges that it is the owner of a family
of GENUINE marks for skin soaps, liquid soaps, and lotions
for hands, face, hair and body, and that applicant’s mark,
as applied to applicant’s goods, so resembles opposer’s
family of marks, and each of the marks, as to be likely to
cause confusion, to cause mistake, or to deceive. Trademark
Act Section 2(d), 15 U.S.C. §1052(d). Specifically, as
established by the parties’ January 27, 2005 stipulation,
opposer is the owner of the following five pending
applications and extant registrations:

1. Registration No. 2809406, issued January
27, 2004, which is of the mark GENUINE BODY (in
Opposition No. 91158556
3
standard character form; BODY disclaimed) for
“skin soaps, toilet soaps, liquid soaps for hands,
face, and body; skin lotion, hand lotion, body
lotion, after-shave lotion; non-medicated bath
salts; facial scrubs, body scrubs, and foaming
scrubs for the face and body; facial concealer,
facial cleanser, facial cream, facial emulsion,
facial lotion, facial makeup, facial mousse; and
bath oils.”

2. Registration No. 2809407, issued January
27, 2004, which is of the mark GENUINE SPA (in
standard character form; SPA disclaimed) for the
same goods.

3. Application Serial No. 78137766, filed June
21, 2002, seeking registration of the mark GENUINE
SKIN (in standard character form; SKIN disclaimed)
for the same goods. Review of the Office’s
automated records indicates that a Statement of
Use was accepted for this application on October
4, 2006, and issuance of a registration is
pending.

4. Application Serial No. 78137825, filed June
21, 2002, seeking registration of the mark GENUINE
FACE (in standard character form; FACE disclaimed)
for the same goods. Review of the Office’s
automated records indicates that a Statement of
Use was accepted for this application on September
20, 2006, and issuance of a registration is
pending.

5. Application Serial No. 78306960, filed
September 29, 2003, seeking registration of the
mark GENUINE HAIR (in standard character form;
HAIR disclaimed) for “hair care products, namely,
shampoo, conditioner, hair gel, hair cleaning
preparations, non-medicated hair care
preparations, hair mousse, hair pomades, hair
spray, hair bleach and bleaching preparations,
hair care preparations, hair color and color
removers; hair dye, hair emollients, hair frosts,
hair gel, hair lighteners, hair lotions, hair
mascara, hair relaxing preparations, hair removing
cream, hair straightening preparations, hair
styling preparations, and hair waving lotion.”
Review of the Office’s automated records indicates
that a fourth extension of time to file a
Opposition No. 91158556
4
Statement of Use for this application was granted
on September 21, 2006.

During trial, each party submitted a notice of reliance
on various documentary materials, and each party submitted
affidavit or declaration testimony pursuant to stipulation
under Trademark Rule 2.123(b). The case is fully briefed.

EVIDENTIARY ISSUES
Initially, we resolve two evidentiary issues. First,
in Paragraph 4 of its notice of reliance, applicant requests
that we take judicial notice “that hundreds and hundreds of
graphical marks incorporate the word ‘genuine.’”
Corresponding Exhibit D to the notice of reliance is a
printout from the Office’s TESS database, consisting of a
listing of 424 applications and registrations by serial
number/registration number, mark and status. Second, in
Paragraph 8 of its notice of reliance, applicant requests
that we take judicial notice that opposer has filed seventy-
one applications for registration of various marks over the
last four years. Corresponding Exhibit G to the notice of
reliance is a printout from the Office’s TESS database
listing opposer’s applications and registrations by serial
number/registration number, mark, and status.
Opposer, in its brief, has objected to these two
requests for judicial notice made by applicant, arguing that
the facts asserted are not the type of facts which may be
Opposition No. 91158556
5
judicially noticed. Applicant, in its brief, contests
opposer’s objections.
The Board does not take judicial notice of registration
records located in the Office, and such registrations may
not be made of record simply by submitting a listing of
them. See TBMP §704.03(b)(1)(B). Accordingly, we have
given no consideration to the factual assertions made by
applicant in Paragraphs 4 and 8 of its notice of reliance,
nor to the listings of registrations contained in Exhibits D
and G to the notice of reliance.

STANDING
Because the parties have stipulated to the status and
title of opposer’s pleaded registrations and applications,
and because opposer’s likelihood of confusion claim is not
frivolous, we find that opposer has established its standing
to oppose registration of applicant’s mark. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).

SECTION 2(d) GROUND OF OPPOSITION
To prevail on its Section 2(d) ground of opposition,
opposer must prove (a) either its ownership of its pleaded
registrations and/or its priority of use of its applied-for
Opposition No. 91158556
6
marks, and (b) that a likelihood of confusion exists.
Before we reach these issues, however, two preliminary
matters require discussion, i.e., opposer’s “family of
marks” claim, and applicant’s “fair use” defense.

Opposer’s “family of marks” claim
Opposer claims that it owns a family of GENUINE marks,
and that a likelihood of confusion exists between
applicant’s mark and such family of opposer’s marks. In
support of its claim, opposer asserts that two of its marks
(GENUINE BODY and GENUINE SPA) are in use, with total sales
under such marks of over $3 million and 460,000 units, and
advertising expenditures of $126,000. Opposer also asserts
that it is developing products and markets for its other
three GENUINE marks, GENUINE SKIN, GENUINE FACE and GENUINE
HAIR.
Our primary reviewing court has stated:

A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that the
public associates not only the individual marks,
but the common characteristic of the family, with
the trademark owner. Simply using a series of
similar marks does not of itself establish the
existence of a family. There must be a
recognition among the purchasing public that the
common characteristic is indicative of a common
origin of the goods. ... Recognition of the
family is achieved when the pattern of usage of
the common element is sufficient to be indicative
of the origin of the family. It is thus necessary
to consider the use, advertisement, and
Opposition No. 91158556
7
distinctiveness of the marks, including assessment
of the contribution of the common feature to the
recognition of the marks as of common origin.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991) [citations
omitted]. The Board has held:

In order to establish a “family of marks,” it must
be demonstrated that the marks asserted to
comprise its “family” or a number of them have
been used and advertised in promotional material
or used in everyday sales activities in such a
manner as to create common exposure and thereafter
recognition of common ownership based upon a
feature common to each mark.

American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457,
461 (TTAB 1978). The Board similarly has held that, to
establish a family of marks:

[I]t must be shown by competent evidence, first,
that … the marks containing the claimed “family”
feature, or at least a substantial number of them,
were used and promoted together ... in such a
manner as to create public recognition coupled
with an association of common origin predicated on
the “family” feature; and second, that the
“family” feature is distinctive (i.e., not
descriptive or highly suggestive or so commonly
used in the trade that it cannot function as a
distinguishing feature of any party’s mark).

Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983).
Applying these principles in the present case, we must
reject opposer’s claim of ownership of a family of GENUINE
marks. Opposer has failed to present any evidence showing
Opposition No. 91158556
8
that it has advertised and promoted its asserted GENUINE
marks together as a family, and there is no evidence upon
which we might base a finding that purchasers recognize
GENUINE as the surname of a family of marks. Mere ownership
of the various marks, or registrations thereof, does not
suffice to establish a family of marks. See J & J Snack
Foods, supra; Consolidated Foods Corp. v. Sherwood Medical
Industries, Inc., 177 USPQ 279 (TTAB 1973); see generally J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §23:61 (4th ed. updated 2006).
Thus, we find that opposer has not established
ownership of a family of GENUINE marks.1 Our Section 2(d)
priority and likelihood of confusion analyses, therefore,
shall be based separately on each of opposer’s pleaded
marks.

Applicant’s “Fair Use” Defense
At pages 7-8 and 22-25 of its brief, applicant argues
that it uses the words GENUINE and SKIN only in their
descriptive sense, and that such descriptive usage is “fair

1 Given opposer’s failure to prove that it has advertised and
used its marks as a family, we need not reach the issue of
whether the word GENUINE is sufficiently distinctive to serve as
the surname for a family of marks in any event. See, e.g.,
American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457 (TTAB
1978)(no AQUA family of marks for water faucets); Ft. Howard
Paper Co. v. Nice-Pak Products, Inc., 127 USPQ 431 (TTAB 1960)(no
NAP family of marks for napkins); cf. Sports Authority Michigan
Opposition No. 91158556
9
use” which opposer should not be entitled to prevent. In
support of this argument, applicant cites KP Permanent Make-
Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 [72
USPQ2d 1833] (2004).
Even if we assume that applicant properly pleaded “fair
use” as an affirmative defense (and opposer disputes that
point), we find that the defense is legally unavailable to
applicant in this case. The “fair use” defense of Trademark
Act §33(b)(4), 15 U.S.C. §1115(b)(4), is a defense available
to a defendant in a federal action charging infringement of
a registered mark, and it has no applicability in inter
partes proceedings before the Board, which deal with the
issue of registrability. See Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1454
(TTAB 1986). Moreover, even if the defense were legally
available in this proceeding, applicant cannot rely on it.
Applicant is not using the words GENUINE and SKIN merely in
a non-trademark, descriptive manner, but instead has
included those words as part of the mark it seeks to
register. This is trademark use, not non-trademark fair
use; applicant’s disclaimer of the words apart from the mark
as shown does not remove them from the mark. Accordingly,

Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2002), appeal
dismissed, 46 Fed. Appx. 962 (Fed. Cir. 2002).

Opposition No. 91158556
10
we have given no consideration to applicant’s arguments in
support of a “fair use” defense, qua defense.2

Section 2(d) priority
Because the parties have stipulated to the status and
title of opposer’s pleaded registrations of the marks
GENUINE BODY and GENUINE SPA, Section 2(d) priority is not
an issue in this case as to those marks and the goods
covered by those registrations. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Because opposer has not yet obtained registrations of
its other three pleaded marks, priority is at issue with
respect to those marks. We find that the earliest date upon
which applicant may rely for priority purposes is the filing
date of its application, January 27, 2003. We find that the
earliest dates upon which opposer may rely for priority
purposes as to its non-registered marks are the application
filing dates for those marks. The GENUINE FACE and GENUINE
SKIN applications were filed on June 21, 2002, a date prior
to applicant’s January 27, 2003 priority date. Subject to
issuance of those registrations, we find that opposer has

2 However, as discussed below, we have taken into consideration
in our likelihood of confusion analysis applicant’s argument that
the word GENUINE in the parties’ marks is weak and entitled to
only a narrow scope of protection.

Opposition No. 91158556
11
priority with respect to those marks and the goods
identified in those applications. However, opposer’s
GENUINE HAIR application was filed on September 23, 2003,
subsequent to applicant’s January 27, 2003 priority date.
Accordingly, opposer cannot establish priority as to its
GENUINE HAIR mark, and its Section 2(d) claim as to that
mark must fail.
Thus, the marks upon which opposer is entitled to rely
for its Section 2(d) ground of opposition in this case are
its marks GENUINE BODY, GENUINE SPA, GENUINE SKIN and
GENUINE FACE. As noted above, however, these marks do not
comprise a family of marks, so we shall make our likelihood
of confusion determination as to each mark, separately. We
shall begin with opposer’s GENUINE SKIN mark, because that
is the mark upon which opposer has based essentially all of
its likelihood of confusion arguments, and because it is the
mark, of opposer’s four marks at issue, which on its face
arguably resembles applicant’s mark most closely.

Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
Opposition No. 91158556
12
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to the second and third du Pont factors,
i.e., the similarity or dissimilarity of the respective
goods, and the similarity or dissimilarity of the trade
channels for the goods. It is settled that it is not
necessary that the respective goods be identical or even
competitive in order to support a finding of likelihood of
confusion. That is, the issue is not whether consumers
would confuse the goods themselves, but rather whether they
would be confused as to the source of the goods. It is
sufficient that the goods be related in some manner, or that
the circumstances surrounding their use be 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 a mistaken belief that they originate from or
are in some way associated with the same source or that
there is an association or connection between the sources of
the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
Opposition No. 91158556
13
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Applicant’s goods are identified in the application as
“non-medicated skin care products namely sunscreen, skin
cleansers, skin moisturizers, pre-moistened cosmetic wipes
and lip balms.” Opposer’s goods, as identified in its
GENUINE SKIN application, are “skin soaps, toilet soaps,
liquid soaps for hands, face, and body; skin lotion, hand
lotion, body lotion, after-shave lotion; non-medicated bath
salts; facial scrubs, body scrubs, and foaming scrubs for
the face and body; facial concealer, facial cleanser, facial
cream, facial emulsion, facial lotion, facial makeup, facial
mousse; and bath oils.”
We find that applicant’s goods, as identified in the
application, are legally identical to certain of opposer’s
goods (applicant’s skin cleansers and moisturizers versus
opposer’s facial cleansers, skin soaps and lotions), and
otherwise are closely related personal care products.
Applicant has presented no argument to the contrary, but
argues instead that the goods are unrelated because the
parties are or will be marketing their respective goods in
different trade channels and to different classes of
purchasers. Specifically, applicant argues that its
products are marketed to purchasers in the “motorcycle
Opposition No. 91158556
14
market,” and not in the mass market retail trade channels in
which opposer markets its products.
Applicant’s argument is unavailing. Neither
applicant’s nor opposer’s identification of goods is limited
in any way as to trade channels or purchasers, and we
therefore must presume that the identified goods are
marketed in all normal trade channels for such goods and to
all normal classes of purchasers for such goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981). Any evidence as to the
differences in the parties’ current or anticipated actual
trade channels is irrelevant to our determination under the
second and third du Pont factors. See Miles Laboratories
Inc. v. Naturally Vitamin Supplements Inc., supra, 1 USPQ2d
at 1450, and cases cited therein.
Thus, we find that the second and third du Pont factors
weigh in opposer’s favor in our likelihood of confusion
analysis.
We turn next to the first du Pont 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 Imports, Inc., supra. 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
Opposition No. 91158556
15
terms of their overall commercial impression that confusion
as to the source of the goods 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).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, in cases
such as this, where the applicant’s goods are identical to
the opposer’s goods, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion is less than it would be if the goods were not
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Opposer’s mark is GENUINE SKIN, in standard character
form. Applicant’s mark is the design mark depicted below.

Opposition No. 91158556
16

Opposer argues that the marks are similar because
applicant’s mark encompasses opposer’s GENUINE SKIN mark in
its entirety, and because both marks are dominated by the
word GENUINE, which appears as the first word in each of the
marks. The design elements of applicant’s mark, according
to opposer, are merely an “incidental neutral backdrop” for
the words and do not suffice to distinguish the marks.
Opposer argues that the two marks have virtually identical
meanings, in that “each seeks to emphasize to the consumer
that the product sold under the mark is a ‘genuine’ skin
care product.” (Opposer’s brief at 12.)
Applicant, in turn, argues that the dominant feature of
its mark is the word RIDE, due to its size and prominence in
the display of the mark. Indeed, applicant argues, the
words GENUINE SKIN CARE in applicant’s mark are “effectively
transparent” to the viewer. Applicant further argues that
the word GENUINE which is common to both marks is so
laudatory and descriptive that its presence in both marks is
an insufficient basis on which to find that the marks are
Opposition No. 91158556
17
confusingly similar in their entireties. In support of this
last contention, applicant has submitted printouts from the
Office’s TARR and TESS databases of forty-six third-party
registrations and applications of design marks which include
the word GENUINE, and which cover a wide variety of goods
and services. We note that in most of these applications
and registrations the term GENUINE is disclaimed.
In its reply brief, opposer argues that applicant
essentially is requesting that we ignore the presence of the
word GENUINE in applicant’s mark. Opposer notes that
GENUINE is not disclaimed in any of opposer’s registrations
and applications, and argues that its presence in both
parties’ marks makes the marks similar.
Considering the parties’ arguments and the evidence of
record, we find as follows under the first du Pont factor.
First, we find that the dominant feature in the commercial
impression created by applicant’s mark must be deemed to be
the word RIDE. This word appears in lettering which is many
times larger than the lettering in which the other wording
appears, and it is prominently and centrally placed in the
mark. Moreover, the word RIDE appears to be wholly
arbitrary as applied to the identified goods. Although we
do not ignore the words GENUINE SKIN CARE and we cannot
adopt applicant’s contention that these words would be
“effectively transparent” to purchasers, we find nonetheless
Opposition No. 91158556
18
that they contribute relatively less to the source-
indicating significance of the mark. It is the prominently-
displayed and arbitrary word RIDE, not the descriptive words
GENUINE SKIN CARE, which is most likely to be viewed and
used by purchasers as the primary source indicating feature
in applicant’s mark. We therefore accord greater weight to
RIDE in our comparison of the marks. See In Re Chatam
International, Inc., supra, and In re National Data Corp.,
supra.
Second, we find that the dominant feature of opposer’s
GENUINE SKIN mark is the word GENUINE, but that is only
because the word SKIN is generic or descriptive and
essentially without source-indicating significance. Even if
GENUINE is the dominant feature of opposer’s mark, we find
that it is inherently a weak, laudatory term which is
entitled only to the narrowest scope of protection. In this
regard, we take judicial notice that “genuine” is defined,
in pertinent part, as “Actually possessing the alleged or
apparent attribute or character: genuine leather,” and as
“Not spurious or counterfeit; authentic.” The American
Heritage Dictionary of the English Language (4th ed. 2000).3
This essentially laudatory meaning and significance of

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

Opposition No. 91158556
19
GENUINE is corroborated by the forty-six third-party
registrations made of record by applicant, in which the word
GENUINE appears and is disclaimed in marks for a wide
variety of goods and services. See, e.g., Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976);
Sports Authority Michigan Inc. v. PC Authority Inc., supra;
McCarthy, supra, at §11:90.
Taking into account the relative strength of the
components of the respective marks, all the while viewing
the marks in their entireties as we must, we find them to be
dissimilar rather than similar, for the following reasons.
In terms of appearance, we find that the design element
of applicant’s mark, as well as the large print in which the
word RIDE appears, result in a mark which is visually
readily distinguishable from opposer’s mark. The only
visual overlap between the marks is the presence in each
mark of the laudatory word GENUINE and the generic or
descriptive word SKIN, and even with respect to these two
words, applicant’s mark looks different from opposer’s mark
because the two words are separated by the prominently-
displayed word RIDE.
Likewise in terms of sound, the words GENUINE and SKIN
would be spoken in both marks, but in applicant’s mark they
are separated by the word RIDE. The word RIDE does not
appear and would not be spoken in opposer’s mark, and this
Opposition No. 91158556
20
point of aural dissimilarity outweighs any similarity
resulting from the marks’ common use of GENUINE and SKIN.
In terms of connotation, we find the marks to be quite
different. Opposer’s mark GENUINE SKIN, taken literally,
would mean “authentic skin” as opposed to, presumably,
inauthentic or counterfeit skin. That is, the word GENUINE
modifies the word SKIN. See the “genuine leather” example
given in the dictionary definition quoted above. In
applicant’s mark, the word GENUINE modifies the words SKIN
CARE, not just the word SKIN, giving applicant’s and
opposer’s marks different meanings to that extent. More
importantly, the presence of the word RIDE as the dominant
feature in applicant’s mark gives applicant’s mark a meaning
which simply does not exist in opposer’s mark.
In terms of overall commercial impression, we find
again that the marks are quite dissimilar, due to the
presence of the dominant word RIDE in applicant’s mark. The
commercial impression of applicant’s mark is that of RIDE-
brand genuine skin care products. No such commercial
impression is created by opposer’s GENUINE SKIN mark.
Comparing the marks in their entireties, we cannot
agree with opposer’s contention that the presence of the
word GENUINE in both marks suffices to make the marks
similar. Instead, we find that any similarity between the
marks which results from the presence of that laudatory and
Opposition No. 91158556
21
weak word in both marks is greatly outweighed by the obvious
dissimilarities between the marks, most importantly the
presence of the arbitrary word RIDE in applicant’s mark and
the absence of that word from opposer’s mark. Purchasers
will readily look to the RIDE portion of applicant’s mark as
a means of distinguishing between the sources of applicant’s
and opposer’s products. They are not likely to assume the
existence of a source connection merely because of the
presence of the laudatory word GENUINE in both marks. Cf.
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313
(TTAB 2005)(NORTON-MCNAUGHTON ESSENTIALS not confusingly
similar to ESSENTIALS).
For these reasons, we find that the marks are
dissimilar rather than similar, and that the first du Pont
factor weighs in applicant’s favor.
Viewing all of the evidence of record as it pertains to
the du Pont evidentiary factors, we conclude that there is
no likelihood of confusion between opposer’s GENUINE SKIN
mark and applicant’s mark, even if those marks were to be
used on the identical and closely-related goods involved
herein. Simply put, the dissimilarity between the marks is
dispositive in this case. See, e.g., Kellogg Co. v. Pack-Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1989), aff’d, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). Therefore, we
Opposition No. 91158556
22
dismiss the opposition as to opposer’s pleaded GENUINE SKIN
mark.
We also find no likelihood of confusion as to the other
three marks upon which opposer’s Section 2(d) claim is
based, i.e., GENUINE BODY, GENUINE SPA, and GENUINE FACE.4
Applicant’s goods, as identified in the application, are
identical and/or related to opposer’s goods, as discussed
above. However, we find that each of these other marks of
opposer’s is even less similar to applicant’s mark than is
the GENUINE SKIN mark which we have already found to be
dissimilar, rather than similar, to applicant’s mark. The
only point of similarity between applicant’s mark and each
of these marks of opposer’s is the presence of the laudatory
and weak word GENUINE. That point of similarity is not
sufficient to overcome the basic dissimilarity between the
marks which results from the dominating presence of the
arbitrary word RIDE in applicant’s mark. This is so,
notwithstanding the identical and related nature of the
goods. Again, the dissimilarity of the marks is dispositive
in each case. See Kellogg Co. v. Pack-Em Enterprises Inc.,
supra.
In summary, we find that opposer does not have a family
of marks upon which to base its Section 2(d) claim, and that

4 As noted above, opposer’s Section 2(d) claim as to its GENUINE
HAIR mark must fail due to lack of priority.

Opposition No. 91158556
23
there is no likelihood of confusion between applicant’s mark
and any of the four marks as to which opposer has priority
or owns a registration. Opposer’s Section 2(d) ground of
opposition therefore fails.

Decision: The opposition is dismissed.