Aesthetics Biomedical, Inc.

This Opinion is Not a
Precedent of the TTAB

Mailed: July 5, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Aesthetics Biomedical, Inc.
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Serial No. 87403574
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Laura J. Zeman-Mullen of Zeman-Mullen & Ford LLP,
for Aesthetics Biomedical, Inc.

Lauren E. Burke, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.

_____

Before Mermelstein, Kuczma and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:

Aesthetics Biomedical, Inc. (“Applicant”) seeks registration on the Principal

Register of the mark MYOWN (in standard characters) for, as amended, “personal

care products, namely, personalized skin creams and non-medicated skin serums that

are marketed to individuals through a personalized patient beauty spa service and

that are custom made to include an individual’s own blood, fat, or tissue which is
Serial No. 87403574

obtained from the individual by a medical professional who provides services for the

personalized patient beauty spa” in International Class 3.1

The Examining Attorney refused registration under Trademark Act Section 2(d),

15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods

identified in the application (as amended), so resembles the mark MYOWN for

“cosmetics and make-up” in International Class 32 on the Principal Register as to be

likely to cause confusion, to cause mistake, or to deceive.

When the refusal was made final, Applicant appealed and requested

reconsideration. After the Examining Attorney denied the request for

reconsideration, the appeal was resumed. Both the Examining Attorney and

Applicant filed briefs, but neither of them filed evidence except for the MYOWN

Registration forming the basis for the refusal to register and two other registrations

that the Examining Attorney ultimately withdrew as additional bases for the refusal.

We affirm the refusal to register.

1Application Serial No. 87403574 filed on April 7, 2017, under Trademark Act Section 1(b),
15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce.
2 Registration No. 5096544, issued December 6, 2016. Office Actions of July 7, 2017, TSDR
1-3; November 17, 2017, TSDR 2-3; and Denial of Request for Reconsideration of October 2,
2018, TSDR 2-3. Page references herein to the application record refer to the online database
of the United States Patent and Trademark Office’s (“USPTO’s”) Trademark Status &
Document Retrieval (“TSDR”) system. All citations to documents contained in the TSDR
database are to the downloadable .pdf versions of the documents. References to the briefs on
appeal refer to the Board’s TTABVUE docket system. Coming before the designation
TTABVUE is the docket entry number; and coming after this designation are the page
references, if applicable.

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Serial No. 87403574

I. Applicable Law

We base our determination of likelihood of confusion under Trademark Act Section

2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that

are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476

F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc.

v. Hargis Indus., Inc., 575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015);

see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

2003). We must consider each DuPont factor for which there is evidence and

argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-

63 (Fed. Cir. 2019).

In applying the DuPont factors, we bear in mind the fundamental purposes

underlying Section 2(d), which are to prevent confusion as to source and to protect

registrants from damage caused by registration of confusingly similar marks. Park

‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985);

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995);

DuPont, 177 USPQ at 566. We have considered each DuPont factor that is relevant

and of record, and have treated any other factors as neutral. See M2 Software, Inc. v.

M2 Communs., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark

Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we

have considered each factor for which we have evidence, we focus our analysis on

those factors we find to be relevant.”).

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Serial No. 87403574

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”). Two key considerations are the

similarities between the marks and the similarities between the goods. See In re

i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting

Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir.

2002) (“The likelihood of confusion analysis considers all DuPont factors for which

there is record evidence but ‘may focus … on dispositive factors, such as similarity of

the marks and relatedness of the goods.’”)).

I. Analysis

We now review the arguments of Applicant and the Examining Attorney in view

of applicable law and the evidence of record.

A. Comparison of Applicant’s Mark
to the Cited Registered Mark

Under the first DuPont factor, we determine the similarity or dissimilarity of

Applicant’s and Registrant’s marks in their entireties, taking into account their

appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at

567; In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018).

“Similarity in any one of these elements may be sufficient to find the marks

confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). See also In

re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016).

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Serial No. 87403574

Here, Applicant’s mark and the mark in the cited registration are identical.

Applicant concedes this in its Brief.3 The first DuPont factor thus weighs heavily in

favor of a finding of likelihood of confusion.

B. Comparison of the Goods and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of

the goods … as described in an application or registration…,” and the third factor

concerns the “similarity or dissimilarity of established, likely-to-continue trade

channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital

LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1359 (Fed. Cir. 2014).

The comparison of goods factor considers whether they are “related in some

manner and/or if the circumstances surrounding their marketing are such that they

could give rise to the mistaken belief that [the goods] … emanate from the same

source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d

1713, 1722 (Fed. Cir. 2012). To be clear, the issue is not whether purchasers would

confuse the goods, but rather whether there is a likelihood of confusion as to the

source of the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).

We compare the goods as identified in the application and in the cited registration,

see Stone Lion Capital Partners, 110 USPQ2d at 1162 (quoting Octocom Sys., Inc. v.

Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)

(“The authority is legion that the question of registrability of an applicant’s mark

must be decided on the basis of the identification of goods set forth in the application

3 7 TTABVUE 9.

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Serial No. 87403574

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.”), not on extrinsic evidence of actual use. See In re Detroit Ath.,

128 USPQ2d at 1052.

Some applicants attempt to avoid a likelihood of confusion by narrowly describing

their goods, channels of trade or its class of customers, as Applicant did here during

prosecution.4 Our analysis, however, is the same. Such restrictions to an applicant’s

identification may not avoid confusion where, as here, the cited registration contains

no express limitations and the respective goods are otherwise related. See, e.g., In re

i.am.symbolic, 123 USPQ2d at 1750 (affirming Board finding that an identification

restricting the goods to those associated with William Adams, professionally known

as ‘will.i.am,’” imposed no meaningful limitation on the nature of the goods, trade

channels, or classes of purchasers).

When considering channels of trade, we are mindful of “the controlling principle

that where the goods in an application or registration are broadly described, they are

deemed to encompass all the goods of the nature and type described therein[,]” In re

Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018), “and, in the absence

of specific limitations in the application and registration, on consideration of the

normal and usual channels of trade and methods of distribution” for goods of the type

identified. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983).

4 Response to Office Action of September 29, 2017, TSDR 2; Petition to Revive and Request
for Reconsideration of August 10, 2018, TSDR 2.

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Serial No. 87403574

The Examining Attorney maintains that the goods recited in the MYOWN

Application, as amended, and the cited MYOWN Registration are very closely related

and could travel through the same channels of trade to the same consumers under

circumstances that could give rise to the mistaken belief that the goods emanate from

a common source. The Examining Attorney buttresses her position by noting that the

MYOWN registration uses broad wording to describe the goods,5 namely, cosmetics

and make-up, which presumably encompasses all goods of the type described,

including Applicant’s more narrowly described goods, “personal care products,

namely, personalized skin creams and non-medicated skin serums that are marketed

to individuals through a personalized patient beauty spa service and that are custom

made to include an individual’s own blood, fat, or tissue which is obtained from the

individual by a medical professional who provides services for the personalized

patient beauty spa.” Thus, the Examining Attorney concludes, Applicant’s and the

Registrant’s goods are legally identical, citing Tuxedo Monopoly, Inc. v. Gen. Mills

Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981), and Inter IKEA Sys.

B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).6

The goods in the cited registration are broadly identified as “cosmetics and make-

up.” Applicant’s goods are a particular kind of “personalized skin creams and non-

medicated skin serums.” We must construe the registrant’s “cosmetics and make-up”

to include all such goods, and there can be no doubt that skin creams and skin serums

5 Applicant concedes this point in its Brief. 7 TTABVUE 12.
6 9 TTABVUE 8.

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Serial No. 87403574

fall within the broad definition of cosmetics.7 Therefore, although Applicant’s goods

are a specific and narrowly described type of cosmetic, they are encompassed within

the registrant’s broadly identified goods, and are to that extent identical with them.

Whether the registrant in fact makes or sells the same goods as Applicant is

irrelevant. Our decision must be based on the goods identified in the cited

registration, and Applicant’s skin creams and serums are included within the

Registrant’s cosmetics.

Applicant contends that for goods (in an application and cited registration) to be

considered “related” for likelihood of confusion purposes they must be related in some

specific manner or the conditions surrounding their marketing are such that they

would be encountered by the same consumers under circumstances that give rise to

the mistaken assumption that the goods originate from the same source, citing In re

Total Quality Grp., Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). However, Applicant

goes on to argue that the Examining Attorney did not point to probative evidence to

show that consumers would encounter the Registrant’s cosmetics and make-up

7 To illustrate, a “Cosmetic” includes substances that you put on your face or body that are
intended to improve your appearance. CAMBRIDGE DICTIONARY
https://dictionary.cambridge.org/dictionary/english/cosmetic (last visited July 3, 2019);
“Make-up” comprises cosmetics (such as lipstick, mascara, and eye shadow) used to color and
beautify the face; a cosmetic applied to other parts of the body. MERRIAM-WEBSTER
https://www.merriam-webster.com/dictionary/makeup (last visited July 3, 2019); an
applicable definition of “Cream” is a cosmetic or medication that resembles cream in
consistency. COLLINS DICTIONARY https://www.collinsdictionary.com/us/dictionary/english-
thesaurus/cream (last visited July 3, 2019). Finally, an applicable definition of “Serum” is a
usually lightweight cosmetic preparation especially for use on the face. MERRIAM-WEBSTER
https://www.merriam-webster.com/dictionary/serum (last visited July 3, 2019). The Board
may take judicial notice of dictionary definitions, including online dictionaries that exist in printed
format, definitions in technical dictionaries, translation dictionaries and online dictionaries. See In re
White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013).

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Serial No. 87403574

together with Applicant’s personalized skin creams and custom made skin serums in

such a way that they would perceive the goods as coming from the same source.8

Similarly, Applicant argues that the Examining Attorney has not provided any

evidence to show that the normal trade channels for the Registrant’s cosmetics and

make-up would be personalized beauty spas that utilize medical professionals to

obtain an individual’s blood, fat, or tissue to put into the individual’s personalized

skin care product. Accordingly, says Applicant, there is no evidence that Applicant’s

trade channels would overlap with the Registrant’s trade channels, citing In re

HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB 2010).

Applicant’s arguments are not well taken. Given the legal identity of the goods,

and the lack of restrictions or limitations in the cited MYOWN Registration as to

their nature, channels of trade, or classes of purchasers for those goods, we must

presume that the channels of trade and classes of purchasers for the goods in the

MYOWN Application are also the same. In re Fat Boys Water Sports LLC, 118

USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101

USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal

presumption in determining likelihood of confusion). See also L. & J.G. Stickley, Inc.

v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties

are at least overlapping, we must presume that the purchasers and channels of trade

would at least overlap.”).

8 7 TTABVUE 10; see also Applicant’s similar arguments at 10 TTABVUE 4-5.

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Serial No. 87403574

Applicant’s citation to In re Total Quality Grp., 51 USPQ2d at 1476 is of no

assistance to its arguments. That decision says:

It is well settled that the issue of likelihood of confusion between
applied-for and registered marks must be determined on the basis of the
goods as they are identified in the involved application and cited
registration, rather than on what any evidence may show as to the
actual nature of the goods, their channels of trade and/or classes of
purchasers. (Citation omitted, emphasis added).

Id.

Applicant’s reliance on In re HerbalScience Grp., 96 USPQ2d at 1324-25 is also

misplaced. In HerbalScience, based on the record before it, the Board found that

“[t]here is nothing in this record to show that a normal channel of trade for [the

registrant’s goods] … is that they are sold to the companies that would purchase

applicant’s identified goods[,]” concluding that “[b]ecause of the differences in the

channels of trade and customers for applicant’s and the registrant’s goods, there is

virtually no opportunity for confusion to arise.” Id.

However, unlike HerbalScience, here Applicant’s mark and the Registrant’s mark

are identical, and the scope of the Registrant’s described goods, without limitation as

to trade channels, encompasses Applicant’s more narrowly-described goods and trade

channels. Just as we must consider the goods in the application and registration to

include all goods of the type identified, we likewise must consider them to move in all

usual channels of trade for goods of that type. In re Hughes Furniture Indus., Inc.,

114 USPQ2d 1134, 1137 (TTAB 2015). Moreover, because the goods in this case are

identical in part, their channels of trade are considered identical to the same extent.

In re Viterra, 101 USPQ2d at 1908. Further, since, under these circumstances, the

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Serial No. 87403574

goods at issue are presumed to be sold to all usual purchasers, we must consider the

purchasers to overlap as well. CBS Inc. v. Parkville Imports, Inc., 223 USPQ 1143,

1144 (TTAB 1984). Thus, the second and third DuPont factors weigh in favor of

finding a likelihood of confusion.

C. The Conditions under Which and Buyers to Whom Sales are
Made, i.e., “Impulse” vs. Careful, Sophisticated Purchasing

The fourth DuPont factor looks at “the conditions under which and buyers to

whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,

177 USPQ at 567. Neither Applicant nor the Examining Attorney presented evidence

on this issue.

Applicant argues that “Applicant’s products require an individual consumer to

patronize a personalized beauty spa” such that “[i]t is obviously clear that Applicant’s

consumers are sophisticated consumers” thus concluding that “[i]n making purchases

of this nature, consumers will demonstrate a high degree of care and consideration”

and “[t]herefore, purchasers encountering the respective goods will not be misled or

confused.”9 However, Applicant argues these points without any supporting evidence

in the record, and “[a]ttorney argument is no substitute for evidence.” Zheng Cai v.

Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting

Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed.

Cir. 2005)).

9 7 TTABVUE 11-12; see also Applicant’s similar arguments at 10 TTABVUE 5-6.

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Serial No. 87403574

The Examining Attorney contends “[t]he fact that purchasers may be

sophisticated or knowledgeable in a particular field does not necessarily mean that

they are sophisticated or knowledgeable in the field of trademarks or immune from

source confusion. … Therefore, even if consumers of Applicant’s goods are

knowledgeable about the process by which the goods are created, a likelihood of

confusion regarding the source of the goods in the marketplace can still exist.

Further, the standard of care for purchasing the goods is that of the least

sophisticated potential purchaser.10

On this record, we find that the relevant purchasing public of Applicant’s and the

Registrant’s goods could consist of both discriminating and ordinary consumers; and

therefore we focus on the latter, as the applicable standard of care for a likelihood-of-

confusion analysis is that of the least sophisticated consumer. In re FCA US LLC,

126 USPQ2d 1214, 1222 (TTAB 2018); Somerset Distilling, Inc. v. Speymalt Whiskey

Distrib., Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989) (alcoholic beverage aficionados vs.

ordinary purchasers who purchase alcoholic beverages to stock a bar or for gifts).

We note, however, that even if we considered Applicant’s purchasers to be

sophisticated we would reach the same result. While customer sophistication is a

factor to be considered, even sophisticated customers are not immune from confusion.

In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).

Here, the applied-for mark is identical to that in the cited registration and for goods

which are encompassed by it, and sold in the same channels of trade to the same

10 9 TTABVUE 10-11.

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Serial No. 87403574

purchasers. Even sophisticated purchasers are not immune from source confusion

under such circumstances. In re Wilson, 57 USPQ2d 1863, 1865–66 (TTAB 2001).

We therefore consider this factor as neutral.

D. No Other Likelihood of Confusion Factors have been
discussed, and are Therefore Presumed to be Neutral

Neither Applicant nor the Examining Attorney submitted evidence or argument

on the other likelihood of confusion factors discussed by the Court of Customs and

Patent Appeals in DuPont, 177 USPQ at 567. We therefore treat them as neutral.

II. Decision

The refusal to register Applicant’s mark MYOWN is affirmed.

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