Upscale Beauty LLC

Trademark Trial and Appeal Board

Mar 18, 2021

88373896 (T.T.A.B. Mar. 18, 2021)

This Opinion is not a
Precedent of the TTAB
Mailed: March 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Upscale Beauty LLC

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Serial No. 88373896
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Jacob Pargament of Garson, Segal, Steinmetz, Fladgate LLP,
for Upscale Beauty LLC.

Troy Knight, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Cataldo, Wolfson, and Coggins,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Applicant, Upscale Beauty LLC, seeks registration on the Principal Register of
the mark UPSCALE (in standard characters), for the following goods:
Aloe vera gel for cosmetic purposes; Argan oil for cosmetic purposes; Bar
soap; Bath bombs; Bath gel; Beauty soap; Body oils; Body scrub; Castor
oil for cosmetic purposes; Cocoa butter for cosmetic purposes; Coconut
oil for cosmetic purposes; Essential oils for aromatherapy use; Eye gels;
Facial masks; Hair masks; Hair oils; Hair shampoos and conditioners;
Lip balm; Massage oils; Non-medicated beard care preparations,
namely, cream, lotions, oils; Non-medicated facial and eye serum
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containing antioxidants; Skin moisturizer; Tea tree oil; Cosmetic body
scrubs for the face, feet, hands, and body, in International Class 3.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark THE UPSCALE NAIL, in typed or
standard characters,2 for:
Nail care preparations, namely, nail cream, nail enamel, nail hardeners,
nail strengtheners, nail conditioners, nail cleaners, nail polish remover,
nail polish, nail polish top coat, nail polish base coat, nail grooming
products, namely, tips, glue, lacquer and glitter, cuticle moisturizers and
conditioners, nail ridge fillers, nail buffing preparations, liquids applied
to nail enamel and nail polish to speed the drying of nail enamel and nail
polish, in International Class 3.3
After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested Reconsideration. 4 TTABVUE. The Examining Attorney denied
Applicant’s Request for Reconsideration and the appeal was resumed. We affirm the
refusal to register.
I. Likelihood of Confusion

Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits registration of a
mark that so resembles a registered mark as to be likely, when used on or in

1 Application Serial No. 88373896 was filed on April 5, 2019, based on Applicant’s allegation
of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
Page references to the application record are to the USPTO’s Trademark Status &
Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal
are to the Board’s TTABVUE docket system.
2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012).
3 Registration No. 2439268 issued on the Principal Register on March 27, 2001; renewed.
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connection with the goods or services of the applicant, to cause confusion, mistake, or
deception of relevant consumers. We base our determination of likelihood of confusion
under Section 2(d) on an analysis of all of the probative facts in evidence that are
relevant to the factors enunciated by the court in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). We have considered each DuPont
factor for which there is evidence and argument. Guild Mortg., 129 USPQ2d at 1161-
62; Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir.
2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed.
Cir. 2010) (“Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered.”)).
Two key considerations are the similarities between the marks and the
relatedness of the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (the “fundamental inquiry mandated by §
2(d) goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672
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(TTAB 2018). In this case, we also consider the strength of the cited mark, the trade
channels for the goods and the classes of consumers to whom the goods are directed.
A. Strength of the Cited Mark
We evaluate the strength of the registered mark and the scope of protection to
which it is entitled under the fifth and sixth DuPont factors. Under the fifth DuPont
factor we examine the “fame” of the prior mark. Under the sixth factor we consider
the number and nature of similar marks, if any, in use on or in connection with
similar goods. DuPont, 177 USPQ at 567. In determining strength of a mark, we
consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”).
Because the cited mark issued on the Principal Register without a claim of
acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), the
registration is entitled to the presumption of validity provided for under Section 7(b)
of the Trademark Act, 15 U.S.C. §1057(b). However, Applicant argues that the
inherent strength of the cited mark is lessened because “upscale” is descriptive: “[t]he
Cited Mark incorporates the word ‘upscale’ to describe the Registrant’s underlying
goods—nail care products that are ‘upscale’.” 9 TTABVUE 9. To support its position,
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Applicant relies on several interrelated definitions of the term “UPSCALE,” used as
an adjective, transitive verb or adverb:4
1. Adjective: “relating to, being, or appealing to affluent
consumers also : of a superior quality.”
2. Transitive verb: “to make (something) more appealing to
affluent consumers : to make (something) more upscale.”
3. Adverb: “to or toward the upper, more expensive end of
a range of products or services,” as in “he tried to move
upscale” or “the chef has taken Sicilian cuisine upscale.”
That the term UPSCALE may suggest Registrant’s nail preparations are chic or
elegant, or worn by the fashion-conscious, simply links the goods to a nebulous, albeit
likely desirable, quality. None of the dictionary definitions show that the term
UPSCALE would immediately convey, without speculation or conjecture, any feature,
characteristic, function, purpose or use of the goods. In this context the term
USPCALE is suggestive, rather than descriptive, of the qualities of luxury, elegance,
distinction and style.
Applicant also submitted eight third-party registrations for marks comprising
UPSCALE to demonstrate that the term has a commonly accepted meaning.
Although a mark’s commercial or marketplace strength is not affected by third-party
registration evidence, Mighty Leaf Tea, 94 USPQ2d at 1259-60; In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (third-party registrations “are not
evidence of third-party use of the registered marks in the marketplace”), such

4 At https://www.merriam-webster.com/dictionary/upscale. November 19, 2019 Response to
Office Action, TSDR 12.
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evidence may show that a term carries a highly suggestive connotation in the relevant
industry and therefore may be considered somewhat weak. Jack Wolfskin Ausrustung
Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Institut National Des Appellations
D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)
(“Such third party registrations show the sense in which the word is used in ordinary
parlance and may show that a particular term has descriptive significance as applied
to certain goods or services.”).
Applicant argues that “[g]iven that the Trademark Office permitted registration
of the Cited Mark and these directly analogous third-party marks [to] peacefully
coexist, Applicant’s Mark ‘UPSCALE’ can similarly coexist with the Cited Mark ‘THE
UPSCALE NAIL’ without giving rise to consumer confusion.” 9 TTABVUE 15. The
marks are summarized below:5

5 Copies of the registration certificates are attached to Applicant’s November 19, 2019
Response to Office Action, TSDR 78-93.
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These third-party registrations fail to weaken the conceptual strength of the cited
registered mark. Notably, six of the marks (all but Reg. No. 2540554 and 4817394)
are for unrelated goods or services such as dog grooming; wigs; fashion news; and
clothing. Reg. Nos. 5792516 and 5186371 also include unique design features that are
distinguishing: and , respectively.
As for Reg. No. 2540554 for THE UPSCALE PEDICURE SANDAL for a pedicure
sandal, and Reg. No. 4817394 for UPSCALE MALE for, inter alia, “beauty salons;”
even if pedicure sandals were shown to be related to nail care preparations or nail
grooming products (which they have not been), or that beauty salons offer manicures
(which likewise has not been demonstrated), the marks themselves carry different
connotations. Especially when Applicant has not introduced any evidence regarding
the extent to which either mark has been used (if at all), a mere two instances of
third-party registrations are insufficient to demonstrate that Registrant’s THE
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UPSCALE NAIL mark is weak and should be afforded a narrow scope of protection.
Cf. Jack Wolfskin, 116 USPQ2d at 1136 n.2 (at least 14 third-party registrations and
uses of paw print marks to show weakness of that design element); Juice Generation,
115 USPQ2d at 1673 n.1 (26 third-party registrations and uses of marks containing
the words “Peace” and “Love” showed the weakness of those words in the opposer’s
marks).
In sum, the third-party registrations do not reduce the inherent strength of the
cited mark, nor do the dictionary definitions prove that the term UPSCALE is merely
descriptive.
Turning to commercial strength, although Applicant correctly notes that
“evidence establish[ing] that the consuming public is exposed to third-party use of
similar marks on similar goods [is relevant],” 9 TTABVUE 9, Applicant has adduced
no such evidence. Further, in an ex parte appeal, the owner of the cited registration
is not a party, and the Examining Attorney is under no obligation to demonstrate
exposure to or recognition of the cited mark in the marketplace. In re Integrated
Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, “in an ex parte
analysis of the du Pont factors for determining likelihood of confusion …, the
‘[commercial strength] of the mark’ … is normally treated as neutral when no
evidence as to [marketplace recognition] … has been provided.” TRADEMARK MANUAL
OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(d)(ix) (Oct. 2018). Thus, because there
is no evidence of record regarding the commercial strength of the cited mark THE
UPSCALE NAIL, this consideration is neutral.
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Based on the totality of the record evidence, we find that the registered mark is
suggestive, and thus inherently distinctive as applied to the identified goods. There
is no evidence of third-party use, and at most, two third-party registrations of
tenuously similar marks for arguably related products or services does not weaken
the strength of the cited registered mark. We therefore find that THE UPSCALE
NAIL is entitled to the normal scope of protection to which inherently distinctive
marks are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of
confusion fame varies along a spectrum from very strong to very weak).
B. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of the
marks in their entireties, taking into account their appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567; see also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x. 516
(Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the goods offered under the respective marks is likely to result. Coach Servs.
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v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012);
see also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB
2016); Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
In comparing Applicant’s UPSCALE mark and the registered mark THE
UPSCALE NAIL, the obvious point of similarity is that both include the term
UPSCALE, which term forms the entirety of Applicant’s mark. While there is no
explicit rule that we must automatically find marks similar when one mark
incorporates the entirety of the other, the fact that Registrant’s mark incorporates
Applicant’s mark is highly probative of likelihood of confusion. See Mighty Leaf Tea,
94 USPQ2d at 1260 (applicant’s mark ML is similar to registrant’s mark ML MARK
LEES); China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d
1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar to opposer’s mark
CHI both for electric massagers); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic
resonance imaging diagnostic apparatus confusingly similar to TITAN for medical
ultrasound diagnostic apparatus).
This is particularly true here, as the dominant term in Registrant’s mark is
UPSCALE, and consumers are likely to focus on this term when viewing Registrant’s
mark. “[I]f the dominant portion of both marks is the same, then confusion may be
likely notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624
(TTAB 1985). Although we consider the marks in their entireties, “in articulating
reasons for reaching a conclusion on the issue of confusion, there is nothing improper
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in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224
USPQ 749, 751 (Fed. Cir. 1985)). The dominant term in Registrant’s mark is
UPSCALE because it is the only suggestive term in the mark.
As for the word THE, it generally “does not have any trademark significance.” In
re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Here, it merely modifies
UPSCALE NAIL by making definite which “upscale nail” is being addressed. As for
NAIL, the word is descriptive, if not generic, of the goods. “That a particular feature
is descriptive or generic with respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a mark.” Nat’l Data, 224
USPQ at 751. Moreover, in recognition of its descriptiveness, the term has been
disclaimed See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant
portion of the mark THE DELTA CAFE).
To reduce the weight of the term UPSCALE in Registrant’s mark, Applicant
submitted copies of 26 registrations owned by Registrant to show that Registrant is
a well-known nail product producer. Applicant argues that the “association with the
Jessica brand creates a distinct commercial impression much greater than the Cited
Mark alone [that] serves to minimize the commercial appearance and impression of
the word ‘upscale’ within the Cited Mark.” 9 TTABVUE 12. We find nothing in the
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record to suggest that the relevant public views the cited mark as intertwined in any
way with the term JESSICA. Even if there were evidence of use of Registrant’s mark,
the mark as registered does not include the term JESSICA, and we do not look to
extrinsic evidence of trade dress, which can be changed at any time. Specialty Brands,
Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir.
1984); Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 727, 55 C.C.P.A. 858, 156
USPQ 340, 342 (CCPA 1968) (“the [advertising] display of the 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.”). Accordingly,
we consider the cited mark’s commercial impression as derived from the mark
without reference to other words, phrases, or designs.
We find both marks suggestive of the qualities of luxury, elegance, distinction and
style, achieved by the term UPSCALE, which is the entirety of Applicant’s mark and
the dominant term in Registrant’s mark. Accordingly, we find that the marks are
similar in sight, sound, meaning and overall commercial impression. The first DuPont
factor weighs strongly in favor of finding a likelihood of confusion.
C. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration.” Stone Lion 110
USPQ2d at 1159; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In comparing the goods, “[t]he issue
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to be determined . . . is not whether the goods . . . are likely to be confused but rather
whether there is a likelihood that purchasers will be misled into the belief that they
emanate from a common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13
USPQ2d 1618, 1624 (TTAB 1989). The third DuPont factor concerns “[t]he similarity
or dissimilarity of established, likely-to-continue trade channels.” Stone Lion, 110
USPQ2d at 1161 (quoting DuPont, 177 USPQ at 567).
Applicant argues that Registrant “only offers one type of nail care product under
the mark. . . specifically a pedicure nail kit.” 9 TTABVUE 14.6 Even if true, we must
compare the goods as they are identified in the application and registration. Stone
Lion, 110 USPQ2d at 1162. Where, as here, the description of goods in the cited
registration broadly identifies the products, we must presume that the goods
encompass all products of the type identified. See In re Solid State Design Inc., 125
USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115
USPQ2d 1007, 1025 (TTAB 2015); In re Hughes Furniture Indus., Inc., 114 USPQ2d
1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’

6 Applicant submitted a copy of a page from Applicant’s website, November 19, 2019 Response
to Office Action, TSDR 75, and a “simple Google search,” Id. at 76-77, to prove that Registrant
was not selling goods under the mark THE UPSCALE NAIL except for a pedicure kit. The
search results are not reliable for the truth of the matter asserted; even if they were, we note
there are several entries for “Upscale Nail” displayed in the Google search that may or may
not identify Registrant. The web page from “jessicacosmetics.com” does not include an access
date and we therefore do not consider it. See Trademark Rule 2.122(e)(2), 37 C.F.R. §
2.122(e)(2) (internet materials is admissible “so long as the date the internet materials were
accessed and their source (e.g., URL) are provided.”). However, even if we did, our decision
herein remains the same.
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necessarily encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”).
Applicant argues that the goods are unrelated because “Applicant does not offer
nail care products.” 9 TTABVUE 14. However, Applicant’s “body oils,” “body scrub,”
“massage oils,” “skin moisturizer,” “Tea tree oil” and “cosmetic body scrubs for the
face, feet, hands, and body” are broadly worded and thus encompass Registrant’s “nail
cream,” “nail conditioners,” and “cuticle moisturizers and conditioners.” Applicant’s
personal care products are thus related to Registrant’s nail care preparations and
nail grooming products.
The Examining Attorney submitted excerpts from ten third-party registrations to
show that “it is common in the bath and beauty preparations industry for one
company to provide under the same mark nail care preparations of the type described
in the registration as well as cosmetic goods of the type identified in the application.”
14 TTABVUE 10. The following are illustrative examples from the June 24, 2019
Office Action, TSDR 4-33:
1. Reg. No. 3601382 for the mark SLICE OF NATURE for, inter
alia, “skin moisturizer; non-medicated lip balm, soap, and
Nail care preparations;” registered April 7, 2009; renewed;
2. Reg. No. 3794921 for the mark C.O. BIGELOW BARBER for,
inter alia, “bath gel, eye gel, hair conditioner, hair shampoo,
lip balm, and nail cream, nail polish; registered May 25,
2010; Section 8 & 15-accepted and acknowledged;
3. Reg. No. 4410342 for the mark LOVINAH for, inter alia,
“aromatic body care products, namely, body lotion, shower
gel, cuticle cream, shampoo, conditioner, non-medicated lip
balm, soap, body polish, body and foot scrub and non-
medicated foot cream; and nail grooming products, namely,
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tips, glue, lacquer and glitter; nail repair products, namely,
linen nail wraps; nail repair products, namely, nail wraps;
nail repair products, namely, silk nail wraps;” registered
October 1, 2013; Section 8 accepted;
4. Reg. No. 5739220 for the mark BEING NATURALS for, inter
alia, “bath soaps; beauty masks; beauty serums; tea tree oil;
aloe vera gel for cosmetic purposes; bath bombs; bath gel;
body scrubs; eye cream; eye gels; hair shampoos and
conditioners; lip balm; massage oil; nail polish; nail polish
remover;” registered April 30, 2019.
“As a general proposition, third-party registrations that cover goods and services
from both the cited registration and an Applicant’s application are relevant to show
that the goods and services are of a type that may emanate from a single source under
one mark.” In re Country Oven, Inc., 2019 USPQ2d 443903, *8-9 (TTAB 2019) (citing
Detroit Athletic, 128 USPQ2d at 1051 ); Ricardo Media v. Inventive Software, 2019
USPQ2d 311355, *3 (TTAB 2019 ).
The Examining Attorney also submitted excerpts from several third-party retail
websites to demonstrate that consumers are conditioned to encounter bath and
beauty products together with nail products bearing the same mark, and perceive
them as emanating from a common source. The below examples from the January 7,
2020 Final Office Action, TSDR 2-91 support this premise:
1. Sephora sells Marc Jacobs nail polish and Marc Jacobs
“Skincare & Makeup Set” under the mark MARC JACOBS;
at www.sephora.com, TSDR 8 and 12;
2. Sephora also sells L’Occitane “shea nail and cuticle oil”
under the mark L’OCCITANE, at www.sephora.com, and
L’Occitane sells “hand creams” under the mark
L’OCCITANE at www.loccitane.com, TSDR 15 and 2;
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3. Dior sells “nail lacquers and nail crème” and various skin
care products such as “serum” and “eye treatment” under the
DIOR mark, at www.dior.com, TSDR 18-23 and 32;
4. Pacifica sells “nail polish” and “facial mask” under the
PACIFICA mark, at www.pacificabeauty.com, TSDR 40, 43;
5. Ere Perez sells “skincare,” “crème,” “serum,” and “lip & eye
butter” skin care products as well as “nail colour,” “nutritive
base” and “top shield” nail care products under the mark
, at www.ereperez.com, TSDR 52-53, 59; and
6. YvesSaintLaurent sells “serum,” “face cream,” and “nail
lacquer” under the mark YSL, at www.yslbeautyus.com,
TSDR 64, 68.
The evidence shows that Applicant’s and Registrant’s respective goods are closely
related. It also shows that the goods may travel in the same or overlapping channels
of trade—generally, health and beauty supply retailers—to the same or overlapping
classes of customers: ordinary consumers interested in beauty and wellness. Where,
as here, the identifications of goods have no restrictions as to nature, type, channels
of trade, or classes of purchasers, they are “presumed to travel in the same channels
of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Applicant argues that Registrant’s trade channel are unknown because Applicant
did not locate the cited mark on Google or on Registrant’s website. 9 TTABVUE 14.
However, the brand was found on Applicant’s Google search, see November 19, 2019
Response to Office Action TSDR 76 and, as discussed above, must be presumed to
include all normal trade channels therefor. Potential consumers of Registrant’s nail
Serial No. 88373896
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products may be misled into thinking that the products represent an extension of
Applicant’s UPSCALE line of cosmetics and creams.
Because some of Applicant’s broadly identified goods may encompass some of
Registrant’s more narrowly identified goods, and the evidence establishes that
Applicant’s and Registrant’s goods are otherwise closely related and may travel in
the same trade channels to the same or overlapping classes of purchasers, the second
and third DuPont factors support a finding of a likelihood of confusion.
II. Conclusion
We have considered of all of the evidence and arguments as they pertain to the
relevant DuPont likelihood of confusion factors. We find that the applied-for mark is
similar to the cited registered mark, that the identified goods are related, and that
those goods may travel through the same or overlapping channels of trade to the same
or overlapping classes of customers. The third-party registered marks cited by
Applicant do not weaken the cited registered mark. For these reasons, we conclude
that Applicant’s applied-for mark, UPSCALE, as used in connection with the goods
identified in the application, so resembles the cited registered mark THE UPSCALE
NAIL as to be likely to cause confusion or mistake, or to deceive relevant consumers
under Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d).
Decision: The refusal to register Applicant’s mark is affirmed.