Two Square Meters LLC

Trademark Trial and Appeal Board

Feb 1, 2007

No. 78490360 (T.T.A.B. Feb. 1, 2007)

Mailed:
February 1, 2007
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Two Square Meters LLC
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Serial No. 78490360
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Adam R. Agensky, Esq. for Two Square Meters LLC.

Shaunia P. Wallace Carlyle, Trademark Examining Attorney,
Law Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Hohein, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On September 27, 2004, Two Square Meters LLC
(applicant) filed an intent-to-use application to register
the mark RENOVATE YOUR SKIN in standard-character form on
the Principal Register for goods now identified as
“toiletries and skin care preparations, namely, lotion,
moisturizer, body wash, soap, skin cleanser, skin cream,
eye cream, shave cream and after-shave lotion” in
International Class 3. Applicant has disclaimed “skin.”
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78490360
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The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with the mark in Reg. No. 2806195,
SKIN RENOVATION, in standard-character form on the
Principal Register, for “compact cases containing cosmetics
and cosmetics, namely, perfumes, facial and body soaps,
hair shampoo, hair lotions, skin cream, skin lotion, eye
cream, eye lotion, moisture cream, moisture lotion,
foundation, anti-wrinkle cream and anti-wrinkle lotion” in
International Class 3. The cited mark was registered on
January 20, 2004. The registration includes a disclaimer
of “skin.”
Applicant argued against the refusal; the Examining
Attorney made the refusal final; and applicant appealed.
Applicant and the Examining Attorney have filed briefs. We
affirm.
Before addressing the likelihood-of-confusion refusal
on the merits, we must attend to a procedural matter.
Applicant states that the Examining Attorney issued a first
action which did not include the likelihood-of-confusion
refusal, and one day letter, issued another action which
did include the refusal. Applicant argues that it suffered
prejudice as a result of this action and asks that we
Ser No. 78490360
3
reverse the refusal due to this procedural glitch. We
decline to do so.
Under the circumstances of this case, the Board will
not consider the procedural correctness of the Examining
Attorney’s action; the Board will restrict its
consideration to the underlying substantive refusal. See
In Re Sambado & Son, Inc., 45 USPQ2d 1312, 1314 (TTAB
1997). Furthermore, as the Examining Attorney correctly
notes, the Trademark Manual of Examining Procedure (TMEP)
(4th ed. 2005) not only authorizes the Examining Attorney to
issue an action to correct a failure to issue an
appropriate refusal, but requires the Examining Attorney to
do so when necessary. TMEP § 706. Accordingly, we will
not second guess the procedural correctness of the
Examining Attorney’s decision to issue the refusal under
Trademark Act Section 2(d) in the second action in this
case, but we will consider the refusal on the merits. In
Re Sambado & Son, Inc., 45 USPQ2d at 1314.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” The opinion in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
Ser No. 78490360
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563, 567 (CCPA 1977), sets forth the factors we may
consider in determining likelihood of confusion. Here, as
is often the case, the crucial factors are the similarity
of the marks and the similarity of the goods of the
applicant and registrant. 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 the goods and differences in
the marks”).
The goods of applicant and the registrant need not be
identical to find likelihood of confusion under Section
2(d) of the Trademark Act. They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the goods originate from the same source.
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). See also On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and
registrations. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
Ser No. 78490360
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(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 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.”).
In this case applicant has identified its goods as
“toiletries and skin care preparations, namely, lotion,
moisturizer, body wash, soap, skin cleanser, skin cream,
eye cream, shave cream and after-shave lotion.” The goods
identified in the cited egistration are “compact cases
containing cosmetics and cosmetics, namely, perfumes,
facial and body soaps, hair shampoo, hair lotions, skin
cream, skin lotion, eye cream, eye lotion, moisture cream,
moisture lotion, foundation, anti-wrinkle cream and anti-
wrinkle lotion.”
Both the application and registration include skin
lotions, soaps, moisturizers and eye cream. Therefore, the
goods in the application and registration are, at least in
Ser No. 78490360
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part, identical. Furthermore, the balance of the goods in
the application and registration are closely related
personal care items.
Applicant argues that its goods differ from the goods
identified in the registration because the registrant’s
goods “…fall under the premium or super-premium, segment of
the skin care market, and are sold through high-end
retailers and department stores…” Applicant also argues
that its products are marketed to men in contrast to the
goods in the cited registration, which are marketed to
women.
In asserting these arguments applicant disregards the
requirement that we look to, and not beyond, the
identifications of goods in the application and
registration in comparing the goods. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 16 USPQ2d at 1787.
Consequently, we cannot consider extrinsic evidence
regarding the registrant’s goods or the channels of trade
for those goods. In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986) (extrinsic evidence and argument
suggesting trade-channel restrictions not specified in
application rejected). For these reasons alone we reject
applicant’s arguments.
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For completeness we also note that the only “evidence”
applicant offered to support its arguments regarding the
nature of the registrant’s goods is a reference to a web
address, allegedly associated with the registrant, in its
brief. We will not consider evidence offered in this form
for any purpose. In re Planalytics Inc., 70 USPQ2d 1453,
1457 (TTAB 2004) (a mere reference to a web address does
not make the information at the web address of record). In
addition, Applicant’s submission of this “evidence” with
its brief is untimely. Trademark Rule 2.142(d) requires
that the record be complete prior to the filing of an
appeal, subject to certain exceptions not relevant here.
Accordingly we conclude that the goods of applicant
and registrant are, at least in part, identical.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods or services are
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Before turning to consideration of the marks, we will
address applicant’s other argument related to the goods,
that is, that there would not be a likelihood of confusion
because the purchasers of the goods in the registration are
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sophisticated. This argument rests entirely on the
assertion that the registrant’s goods are expensive, “high-
end” products, priced in the $100 range and higher. For
all of the same reasons we stated in our discussion of the
registrant’s goods we reject applicant‘s arguments
regarding the sophisticated nature of the purchasers. For
purposes of this argument also, we must consider the goods
as identified in the application and registration. Goods
identified simply as “soaps” or “lotions” could vary
greatly in price and could include inexpensive products
purchased by the general public without significant
deliberation. Also, as the Examining Attorney notes, even
sophisticated consumers are not immune from trademark
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988) and In
re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Accordingly, we conclude that there is no basis in
this record to conclude that there would be a diminished
likelihood of confusion due to the sophistication of
potential purchasers. Therefore, we have given no
consideration to this factor in our decision.
Turning to the marks, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Ser No. 78490360
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Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues that the marks differ in all respects
stating, “The similarities between Applicant’s RENOVATE
YOUR SKIN mark and Kose’s SKIN RENOVATION [mark] are
confined to the use of the term ‘SKIN’, which is disclaimed
in both the instant application and the registration, and
the inclusion of a ‘RENOVATE’-formative element. These de
minimus similarities are far outweighed by the mark’s
differences in sight, sound, and meaning/connotation, which
cumulatively act to create a distinct commercial
impression.” Applicant argues, further, that “…it is well
established that even when marks are identical in sound
and/or appearance (which is clearly not the case here),
they may nonetheless create different commercial
impressions when applied to the respective parties’ goods.”
In this connection applicant cites numerous cases
including, for example, In re British Bulldog, Ltd., 224
USPQ 854 (TTAB 1984) (PLAYERS for men’s underwear held not
likely to be confused with PLAYERS for shoes). Applicant
also argues that the marks at issue here are
distinguishable from the cases where marks were found to be
similar on the basis that elements were merely transposed,
for example, RUST BUSTER versus BUST RUST in In re
Ser No. 78490360
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Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988).
Applicant also argues that the marks differ in sound and
that the marks differ in connotation, stating, “Applicant’s
mark is instructive, containing a ‘call to action,’”
whereas registrant’s mark, “…is comprised of the nouns
‘skin’ and ‘renovation.’ There is no action involved. It
is a descriptive, or reflective message.”
The Examining Attorney argues that “Applicant’s mark
and the registrant’s mark are confusingly similar because
they convey a very similar commercial impression.” The
Examining Attorney argues further that “…the test of
likelihood of confusion is not whether the marks can be
distinguished when subjected to a side-by-side comparison.
The question is whether the marks create the same overall
impression. Recot, Inc.v. M.C. Becton, 214 F.2d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000); Visual Information Inst.,
Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).”
We agree with the Examining Attorney. We recognize
that there are some differences in appearance and sound
between the marks, but the overall similarity in
connotation and commercial impression is more important
here. The marks are fundamentally the same in concept.
Both suggest that the skin can be renovated, restored or
improved - in the same way that a property might be. The
Ser No. 78490360
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difference in form which applicant emphasizes is not
sufficient to distinguish the marks under the totality of
circumstances here. We find it unlikely that potential
purchasers for goods such as these, which could include the
general public, will take note of and recall the
distinction between the “instructive” versus the
“descriptive or reflective” form, as applicant argues. As
the Examining Attorney notes, “The focus is on the
recollection of the average purchaser who normally retains
a general rather than specific impression of trademarks.
Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ
537 (TTAB 19790; Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).”
We find applicant’s arguments regarding the marks
unpersuasive, including applicant’s arguments that even
identical marks may project different commercial
impressions as applied to different goods. As we stated
above, the goods here are, at least in part, identical.
Accordingly, we conclude that applicant’s RENOVATE
YOUR SKIN mark is similar to the cited SKIN RENOVATION
mark.
In a related argument, Applicant also points to a
number of third-party registrations for marks unrelated to
the marks at issue here in support of its general position
Ser No. 78490360
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that there is not a likelihood of confusion in this case.
Specifically, applicant provided a list of third-party
registrations to support its argument that other marks,
based on the same root word, coexist on the register for
personal care items.1 Those marks include, for example,
ILLUMINE versus ILLUMINATE and ILLUMINATION. We find these
arguments and this evidence unpersuasive. In the end, we
must decide each case on its unique facts. In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
Lastly, applicant also argues that the manner in which
it intends to use its mark, in contrast to the manner in
which the registrant uses its mark, will avoid confusion.
Applicant states that “Applicant intends for its RENOVATE
YOUR SKIN mark to be akin to a house mark, appearing on all
products in the relevant collection. Kose’s SKIN
RENOVATION mark is used in a secondary fashion, appearing

1 In her brief, the Examining Attorney argued that we should not
consider this evidence because applicant provided only a listing
and not acceptable copies of the relevant Office records. In its
reply brief applicant correctly points out that applicant first
provided the listings with its office action response and the
Examining Attorney failed to advise applicant at that time that
the records must be in proper form. See In Re Hayes, 62 USPQ2d
1443, 1445 n.3 (TTAB 2002). Consequently, we find that the
Examining Attorney has waived the objection, and we have given
full consideration to the listing applicant provided.

Ser No. 78490360
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under its primary mark, AWAKE, which appears much more
prominently in its packaging (see awakecosmetics.com).”
We have already noted problems both with the form of
the “evidence” applicant offers here, as well as the
general prohibition against the use of extrinsic evidence
in this manner. In re Bercut-Vandervoort & Co., 229 USPQ
at 764. Furthermore, we cannot base our evaluation of
applicant’s mark or registrant’s mark on a specific display
applicant used or intends to use, or a display registrant
allegedly uses. Vornado, Inc. v. Breuer Electric Mfg. Co.,
390 F.2d 724, 156 USPQ 340, 342 (CCPA 1968) (“…the display
of a mark in a particular style is of no material
significance since the display may be changed at any time
as may be dictated by the fancy of the applicant or the
owner of the mark”). We must confine our consideration to
the specific mark in the application and registration.
Also, in the case of the mark in the cited
registration, SKIN RENOVATION, Trademark Act Section 7(b),
15 U.S.C. § 1057(b), provides that the registration is
prima facie evidence, among other things, “of the
registrant’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services
specified in the certificate.” Likewise, if applicant
received a registration as a result of this application, it
Ser No. 78490360
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too would be entitled to claim such a right. In neither
case is the right subject to the use of the mark in
conjunction with any other mark or in any particular
manner. Accordingly, we reject applicant’s arguments based
on the manner of use of the respective marks.
In conclusion, we have considered all relevant
evidence in this case bearing on the du Pont factors and
conclude that there is a likelihood of confusion between
applicant’s RENOVATE YOUR SKIN mark and the SKIN RENOVATION
mark in the cited registration. We conclude so principally
because the marks are similar and the goods identified in
the application and cited registration are, at least in
part, identical and otherwise related. We note also that
applicant has discussed a number of prior cases; we have
considered those arguments carefully and found them
unpersuasive due to significant factual differences between
those cases and the one before us.
Decision: The refusal to register applicant mark
under Trademark Section 2(d) is affirmed.