Kayapan Satya Dharshan

This Opinion is not a
Precedent of the TTAB

Mailed: July 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kayapan Satya Dharshan
_____

Serial Nos. 87347454 and 87976304
_____

Clifford D. Hyra of Symbus Law Group LLC,
for Kayapan Satya Dharshan.

Julie Thomas Veppumthara, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.

_____

Before Wolfson, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Kayapan Satya Dharshan (“Applicant”) seeks registration on the Principal

Register of the mark:
Serial Nos. 87347454 and 87976304

for:

Body and beauty care cosmetics; Cosmetic creams;
Cosmetic preparations for skin care; Essential oils; Non-
medicated balms for use on skin; Skin cleansers; Skin
moisturizer in International Class 3,1 and

Disinfectants; Medicated soaps; Medicinal herbal
preparations in International Class 5.2

The Trademark Examining Attorney refused registration of Applicant’s mark set

forth in the above applications under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d), due to a likelihood of confusion with the mark in Registration No. 3801802

owned by Dermazone Solutions, Inc. (Registrant), for the mark DERMAZONE

SOLUTIONS (standard character mark) for:

After shave lotions; After sun creams; After-shave creams;
After-sun lotions; Aftershave; Aftershave cologne;
Aftershave preparations; Age retardant gel; Age retardant
lotion; Age spot reducing creams; Anti-aging creams; Anti-
wrinkle creams; Bar soap; Beauty creams; Beauty creams
for body care; Beauty gels; Beauty lotions; Beauty masks;
Body creams; Body lotions; Body masks; Cosmetic creams
for skin care; Cosmetic preparations against sunburn;
Cosmetic preparations for body care; Cosmetic sun-
protecting preparations; Cosmetic sun-tanning
preparations; Cosmetic suntan lotions; Creams for cellulite
reduction; Exfoliant creams; Eye cream; Eye gels; Eye
lotions; Eye make-up remover; Face and body beauty

1 Application Serial No. 87347454 was filed on February 23, 2017, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The mark consists of the word “DERMOZONE” with
three interlocking semi-circles above the “E.”

2 Application Serial No. 87976304, a child of Serial No. 87347454, deemed filed on February
23, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C § 1051(b). The mark consists of
the word “DERMOZONE” with three interlocking semi-circles above the “E.” Applicant
voluntarily sought to divide its initial application; following division, the Examining Attorney
issued Final Office Actions with respect to each application.

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Serial Nos. 87347454 and 87976304

creams; Face and body creams; Face and body lotions; Face
creams; Facial beauty masks; Facial cleansers; Facial
concealer; Facial creams; Facial lotion; Facial masks; Hand
cleaning preparations; Hand creams; Hand lotions; Hand
soaps; Lip balm; Lip cream; Lip gloss; Lotions for cellulite
reduction; Lotions for face and body care; Moisturizing
creams; Nail care preparations; Nail cream; Night cream;
Non-medicated acne treatment preparations; Non-
medicated bath preparations; Non-medicated foot cream;
Non-medicated lip care preparations; Non-medicated lip
protectors; Non-medicated ointments for the prevention
and treatment of sunburn; Non-medicated skin care
preparations; Non-medicated skin creams; Non-medicated
stimulating lotions for the skin; Non-medicated sun care
preparations; Perfumes; Perfumes, aftershaves and
colognes; Perfumes, eau de colognes and aftershaves; Self-
tanning preparations; Shaving creams; Shaving gels;
Shaving lotions; Shaving preparations; Skin abrasive
preparations; Skin and body topical lotions, creams and
oils for cosmetic use; Skin bronzing creams; Skin clarifiers;
Skin cleansers; Skin cleansing cream; Skin cleansing
lotion; Skin conditioners; Skin creams; Skin emollients;
Skin gels for accelerating, enhancing or extending tans;
Skin lighteners; Skin lightening creams; Skin lotions; Skin
masks; Skin moisturizer; Skin moisturizer masks; Skin
texturizers; Skin toners; Skin whitening creams; Skin
whitening preparations; Sun block; Sun block
preparations; Sun care lotions; Sun creams; Sun screen;
Sun screen preparations; Sun tan gel; Sun tan lotion; Sun-
block lotions; Sunscreen creams; Suntanning preparations;
Toning lotion, for the face, body and hands; Under-eye
enhancers; Vanishing cream; Wrinkle removing skin care
preparations; Wrinkle resistant cream, in International
Class 3.3

When the refusals were made final, Applicant appealed and requested

reconsideration. After the Examining Attorney4 denied the requests for

3Registration No. 3801802 issued on June 15, 2010; Sections 8 & 15 combination declaration
accepted and acknowledged.
4 Examining Attorney Kathleen M. Vanston was responsible for examination of the
applications. After the appeals were filed and Applicant’s Requests for Reconsideration were

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Serial Nos. 87347454 and 87976304

reconsideration, the appeals were resumed. After considering all arguments and

evidence filed in each case, we affirm the refusals to register.

I. Consolidation of Appeals

We have considered the evidence and arguments filed in both cases, which are

highly similar. They involve applications for the identical mark which have been

refused registration due to a likelihood of confusion with the same previously

registered mark. Thus, the two appeals involve common factual and legal issues, and

are addressed in this single opinion. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d

1042, 1043 (TTAB 2013) (two appeals involving common issues of law and fact decided

in a single opinion); In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009) (because

appeals involved common questions of law and fact and records were practically

identical, Board decided both in a single opinion); In re Vertex Group LLC, 89 USPQ2d

1694, 1695 (TTAB 2009) (because of virtually identical issues presented in appeals

for two applications, Board issued single opinion); TRADEMARK TRIAL AND APPEAL

BOARD MANUAL OF PROCEDURE (TBMP) §1214 (2019).

II. Evidentiary Issues

Before proceeding to the merits of the refusal, we address the Examining

Attorney’s evidentiary objections. The first objection is to the webpages submitted

with Applicant’s Appeal Briefs.5 Nearly identical evidence was initially submitted

denied, the USPTO reassigned responsibility for these applications to Examining Attorney
Julie Thomas Veppumthara. “Examining Attorney” is used to refer to either of the foregoing.
5 Examining Attorney’s Appeal Briefs for Serial Nos. 87347454 (9 TTABVUE 7-8) and
87976304 (17 TTABVUE 7).

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Serial Nos. 87347454 and 87976304

with Applicant’s June 12, 2018 Requests for Reconsideration. The Examining

Attorney objected to that evidence (attached to the Requests for Reconsideration) on

the grounds that the URLs and the date(s) the webpages were accessed were not

provided.6 Although Applicant’s Appeal Briefs include copies of the same pages,

which now show the URL and the date the webpages were accessed, the record in the

applications should be complete prior to filing of the appeals. As set forth in Rule

2.142(d), 37 C.F.R. § 2.142(d), if Applicant wished to introduce additional evidence

identifying the URLs and the date of the webpages after the appeals were filed,

Applicant should have submitted a request to the Board to suspend the appeals and

remand the applications for further examination to consider the evidence.

Accordingly, the evidence submitted with Applicant’s Appeal Briefs was not made of

record during examination, is untimely, and will not be considered. Additionally, the

evidence initially submitted with Applicant’s June 12, 2018 Requests for

Reconsideration lacks the URLs and the dates the webpages were accessed and is

therefore not in the record.

Citations to TTABVUE throughout the decision are to the Board’s public online database
that contains the appeal file available on the USPTO website, www.uspto.gov. The first
number represents the docket number in the TTABVUE electronic case file and the second
represents the pertinent page number(s).
6July 3, 2018 Requests for Reconsideration Denied. Inasmuch as the evidence submitted also
appears to be from foreign publications, the Examining Attorney noted that it is “highly
unlikely that purchasers of cosmetics in the United States would be perusing foreign
publications about the cosmetic industry. Accordingly, the evidence of record would be
entitled to little weight.” Id. at TSDR 3 for Serial No. 87347454 and at TSDR 5 for Serial No.
87976304. We agree. Even if this evidence had been considered, it would not have affected
the outcome.
Citations to the examination record refer to the downloadable .pdf version of the USPTO’s
online Trademark Status & Document Retrieval system (TSDR).

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Serial Nos. 87347454 and 87976304

The Examining Attorney’s second objection is to Applicant’s references to third-

party registrations.7 During prosecution and on appeal, Applicant mentions, without

identifying, that there are “hundreds” of third-party registrations for marks that

contain one of the components present in the cited Registrant’s mark (i.e., DERMA-,

-ZONE or SOLUTION).8 The Examining Attorney advised Applicant that any third-

party registrations on which it intended to rely had to be made part of the record

prior to appeal.9 Because Applicant did not make those third-party registrations of

record, the Examining Attorney requests that the Board disregard the references to

the third-party registrations.

To make third-party registrations part of the record, an applicant must submit

copies of the registrations, or the complete electronic equivalent from the USPTO’s

automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059,

2064 (TTAB 2013); TBMP § 1208.02; TRADEMARK MANUAL OF EXAMINING

PROCEDURE § 710.03 (TMEP) (Oct. 2018). Inasmuch as Applicant did not submit

either paper copies or the electronic equivalents of such registrations prior to appeal,

the Examining Attorney’s request is granted and the third-party registrations will

not be considered. Mere listings of registrations are not sufficient to make the

registrations of record. In re Compania de Licores Internacionales S.A., 102 USPQ2d

7 Examining Attorney’s Appeal Briefs for Serial Nos. 87347454 (9 TTABVUE 8-9) and
87976304 (17 TTABVUE 7-8).
8Applicant’s Appeal Brief for Serial No. 87347454 pp. 5, 9 (7 TTABVUE 6, 10), November 20,
2017 Response to Office Action TSDR 4-5, 8-9; Appeal Brief for Serial No. 87976304 pp. 6, 9-
10 (15 TTABVUE 7, 10-11), November 20, 2017 Response to Office Action TSDR 4-5, 8-9.
9Serial No. 87347454 December 12, 2017 Final Office Action at TSDR 4; Serial No. 87976304
December 12, 2017 Final Office Action at TSDR 5.

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Serial Nos. 87347454 and 87976304

1841, 1843 (TTAB 2012); In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). See

generally TBMP § 1208.02; TMEP 710.03.

III. Likelihood of Confusion

Our determination under § 2(d) is based on an analysis of all probative facts in

evidence that are relevant to the factors bearing on the issue of likelihood of

confusion. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);

In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA

1973). In any likelihood of confusion analysis, two key considerations are the

similarities between the marks and the similarities between 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.”).

“Not all of the DuPont factors are relevant to every case, and only factors of

significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601

F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). However, all factors “‘must be

considered’ ‘when [they] are of record,’” even though “not all of the DuPont factors are

relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376,

129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d

1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal quotation omitted)).

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Serial Nos. 87347454 and 87976304

A. Similarity of the Goods, Channels of Trade and Classes of Customers

In determining the similarity of Applicant’s and Registrant’s goods it is sufficient

if likelihood of confusion for each Class of goods is established for any item

encompassed by the identification of goods for that Class. See In re Wacker Neuson

SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (citing Tuxedo Monopoly, Inc. v. General

Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).

Looking first to the goods in Class 3, both Applicant’s application Serial No.

87347454 and the cited registration cover some of the same goods as set forth below:

Applicant’s Serial No. 87347454 Registrant’s Reg. No. 3801802

Cosmetic creams Cosmetic creams for skin care; face and
body beauty creams; face and body
creams
Cosmetic preparations for skin care Cosmetic preparations for body care

Skin cleansers Facial cleansers; skin cleansers

Skin moisturizer Skin moisturizer; moisturizing creams

Thus, Applicant’s and Registrant’s goods in Class 3 set forth above are identical in-

part. Applicant’s remaining goods in Class 3, i.e., body and beauty care cosmetics;

essential oils; non-medicated balms for use on skin, are closely related to Registrant’s

Class 3 goods.

Because Applicant’s goods in Class 3 and Registrant’s goods in Class 3 overlap in-

part, are otherwise closely related, and do not contain a limitation of any kind with

respect to classes of consumers or channels of trade, they are at minimum legally

identical in-part, and we can presume that they are provided in the same channels of

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Serial Nos. 87347454 and 87976304

trade and are sold to the same classes of purchasers at least with respect to the

overlapping goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,

1801 (Fed. Cir. 2018) (quoting In re Viterra, 101 USPQ2d at 1908); In re Yawata Iron

& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally

identical goods, the channels of trade and classes of purchasers are considered to be

the same); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015); In re Smith

and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).

Next, we compare the Class 5 goods set forth in Applicant’s application Serial No.

87976304, “disinfectants, medicated soaps and medicinal herbal preparations,” with

the goods in the Registration, including “bar soap, facial cleaners, hand cleaning

preparations, hand soaps, and skin cleansers” in Class 3.

The Examining Attorney submits evidence including webpages from numerous

third-party websites including , ,

10, , ,

, , , , and ,11 showing that the same entity commonly provides Applicant’s goods, i.e.,

disinfectants, medicated soaps and medicinal herbal preparations, and Registrant’s

10See Serial No. 87976304 December 12, 2017 Final Office Action TSDR at 41-42 (Aidance);
51-60 (Cetaphil); 63-72 (Neutrogena).
11See Serial No. 87976304 July 3, 2018 Request for Reconsideration Denied TSDR at 17-19,
21-22, 25, 31-32 (Naturasil); 38-41 (Cuticura); 44-45, 47-48 (Townes); 49, 51 (Blissful
Sunshine botanicals); 75-81 (Amber’s Organics); 88-93 (Aloe Up); 94-97 (Hugo Naturals); 98-
101 (Touch of Mink).

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Serial Nos. 87347454 and 87976304

skin care products, and that such goods are marketed under a single mark, and

provided through the same trade channels to the same classes of consumers. The

evidence shows that Applicant’s goods and Registrant’s goods are offered for sale

together on the same websites, which are specifically targeted to cosmetics and skin

care products, under the same brands. Therefore, Applicant’s goods in Class 5 and

Registrant’s goods in Class 3 are closely related goods. See, e.g., In re Davey Prods.

Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91

USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

The goods need not be identical or even competitive, or even offered through the

same channels of trade, in order to find that they are related for purposes of our

likelihood of confusion analysis. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d

1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54

USPQ2d 1894, 1898 (Fed. Cir. 2000); In re 1st USA Realty Prof’ls. Inc., 84 USPQ2d

1581, 1584 (TTAB 2007). That is, the issue is not whether consumers would confuse

the goods themselves, but rather whether they would be confused as to their source.

In re Davey Prods., 92 USPQ2d at 1202; In re Rexel Inc., 223 USPQ 830, 831 (TTAB

1984). It is enough that the goods 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 and/or services] emanate from the same source.”

Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722

(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB

2007)); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,

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Serial Nos. 87347454 and 87976304

1290 (Fed. Cir. 1984); see also In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB

2012).

The fact that Applicant’s goods in Serial No. 87976304, i.e., disinfectants,

medicated soaps, and medicinal herbal preparations, and Registrant’s goods are

categorized in different classes by the USPTO (Class 5 for Applicant’s goods and Class

3 for Registrant’s goods) does not establish that the goods are unrelated. The

determination of the classification of goods is a purely administrative determination

unrelated to the determination of likelihood of confusion. Jean Patou, Inc. v. Theon,

Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); Nat’l Football League v.

Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990).

Because there are no limitations as to channels of trade or classes of purchasers

in the description of goods in the cited registration and Applicant’s application for

goods in Class 5, it is presumed that Registrant’s goods and Applicant’s goods move

in all channels of trade normal for those goods, and that they are available to all

classes of purchasers for those goods. See Paula Payne Prods. Co. v. Johnson

Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973); In re Linkvest

S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). The third-party website evidence

submitted by the Examining Attorney confirms that such goods are in fact offered for

sale through the same channels of trade, i.e., on the same websites, to the same

classes of customers. Thus, customers encountering Applicant’s goods and the cited

Registrant’s goods sold under similar marks are likely to believe the goods emanate

from the same source. See Octocom Systems Inc. v. Houston Computers Services Inc.,

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Serial Nos. 87347454 and 87976304

918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990) (purchasers would likely be

confused when goods as closely related as modems and computer programs are sold

under the virtually identical marks).

In view of the foregoing, we find that Applicant’s goods in Classes 3 and 5 are

identical-in-part and otherwise closely related to Registrant’s goods in Class 3, travel

in the same channels of trade, and are sold to the same classes of customers,

supporting a likelihood of confusion under the second and third du Pont factors.

B. Similarity of Marks

Next, we consider the first du Pont factor focusing on the similarity or

dissimilarity of the marks in their entireties as to appearance, sound, connotation

and commercial impression. In re Viterra, 101 USPQ2d at 1908; du Pont, 177 USPQ

at 567. When comparing marks, the test is not whether the marks can be

distinguished in a side-by-side comparison, but rather whether the marks are

sufficiently similar in terms of their overall commercial impression that confusion as

to the source of the services offered under the respective marks is likely to result.

Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103

USPQ2d 1435, 1440 (Fed. Cir. 2012).

When evaluating a composite mark containing both words and designs, like

Applicant’s mark , the word portion is more likely to indicate the origin

of the goods because it is that portion of the mark that consumers use when referring

to or requesting the goods. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016)

(citing In re Viterra, 101 USPQ2d at 1908, 1911). Therefore, when comparing the

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Serial Nos. 87347454 and 87976304

marks in their entireties, the word portion is often considered the dominant feature

and is accorded greater weight in determining whether marks are confusingly

similar. In re Viterra, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s

Foodservice, Inc., 710 F.2d 1565, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus,

DERMOZONE is the dominant feature of Applicant’s mark.

Turning to Registrant’s mark, it is well established that in looking at a mark in

its entirety, one feature of a mark may be more significant or dominant in creating a

commercial impression. See In re Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp.,

753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Matter that is descriptive of or

generic for a party’s goods is typically less significant or less dominant in relation to

other wording in a mark. See Anheuser- Busch, LLC v. Innvopak Sys. Pty Ltd., 115

USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340,

71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

Here, the definition of “solution” shows that the wording “SOLUTIONS” in the

registered mark DERMAZONE SOLUTIONS is merely descriptive of Registrant’s

goods. Specifically, “solution” refers to “products or services designed to meet a

particular need.”12 Registrant’s and Applicant’s products can both be described as

solutions for skin care issues. Thus, “SOLUTIONS” is less significant in terms of

affecting the commercial impression of Registrant’s mark and distinguishing it from

12December 12, 2017 Final Office Actions, Serial No. 87347454 TSDR at 7 Oxford Living
Dictionaries, 12/7/2017, Serial No.
87976304 TSDR at 85, from Oxford Living Dictionaries, 12/12/2017.

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Serial Nos. 87347454 and 87976304

Applicant’s mark, rendering the wording DERMAZONE the more dominant element

of Registrant’s mark.

Looking at the dominant feature of Applicant’s mark, DERMOZONE, and the

dominant feature of Registrant’s mark, DERMAZONE, they are virtually identical,

differing by only one vowel located in the center of each word. Inasmuch as the term

“derm” means “skin,” which has variants of “derma-” and “dermo-”,13 prospective

customers of Applicant’s or Registrant’s skin care items are likely to focus on the

leading term DERM in each mark, and (whether DERMA- or DERMO-) the ending

term -ZONE; the center vowel being of little, if any, consequence.

In the marketplace, consumers may not necessarily encounter the marks side-by-

side, and must rely upon their imperfect recollections. In re Integrated Embedded,

120 USPQ2d 1504, 1513 (TTAB 2016). Hence, a minor difference in the pronunciation

of the marks’ first term is likely to go unnoticed, In re Viterra, 101 USPQ2d at 1912,

and would not avoid a likelihood of confusion. See In re Peace Love World Live, LLC,

127 USPQ2d 1400, 1407 (TTAB 2018) (slight differences in marks do not normally

create dissimilar marks); In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351

(TTAB 1983).

Although there is no correct pronunciation of the marks because it is impossible

to predict how the public will pronounce a particular mark, Embarcadero Techs., Inc.

v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013), here, the marks in question

Id., TSDR at 89-90 from Merriam-Webster Unabridged Dictionary, https://www.merriam-
13

webster.com/ dictionary/derm 12/12/2017.

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Serial Nos. 87347454 and 87976304

could be pronounced virtually the same; such similarity in sound alone may be

sufficient to support a finding that the marks are confusingly similar. In re 1st USA

Realty Prof’ls, 84 USPQ2d at 1586; In re White Swan Ltd., 8 USPQ2d 1534, 1535

(TTAB 1988).

DERMAZONE and DERMOZONE, each mark beginning with DERM- and ending

with -ZONE, are similar in appearance and pronunciation and each connotes the idea

of a skin zone or area. Marks may be confusingly similar in appearance where similar

terms or phrases or similar parts of terms or phrases appear in the compared marks

and create a similar overall commercial impression. See Crocker Nat’l Bank v.

Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub

nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811

F.2d 1490, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and

COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66

(TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re

Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and

MILLTRONICS confusingly similar).

Applicant argues that Registrant’s mark consists of DERMA- and -ZONE while

its mark consists of DERM- and -OZONE, rendering a different commercial

impression. Applicant contends that its mark DERMOZONE is a compound of

DERM- (a prefix relating to skin) and -OZONE, which is an inorganic oxygen

molecule, O3. Applicant argues “[t]he term [O3] is a reference to ozonation, a process

used to create goods of the Applicant, which are skin care products having the

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Serial Nos. 87347454 and 87976304

compound Dalethyne, which is produced from ozonated olive oil.”14 However, without

supporting evidence showing consumers’ knowledge of ozonation or its impact on

Applicant’s goods, it is unlikely that consumers of Applicant’s body and beauty care

cosmetics, disinfectants, medicated soaps and medicinal herbal preparations would

be familiar with the fact that Applicant’s goods are created via ozonation or that

Applicant’s products are produced from ozonated olive oil. Absent such knowledge, it

is unlikely that consumers would perceive Applicant’s mark as DERM + OZONE,

rather than DERMO + ZONE. Accordingly, Applicant’s argument based on

differences in commercial impressions created by its mark versus Registrant’s mark

is not persuasive.

The test of likelihood of confusion 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 their entireties that confusion as to the source of the goods or

services 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

specific impression of trademarks. Midwestern Pet Foods v. Societe des Produits

Nestle, 103 USPQ2d at 1440; Recot v. M.C. Becton, 54 USPQ2d at 1899; In re Bay

State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs. v.

Triumph Learning, 101 USPQ2d at 1721); Sealed Air Corp. v. Scott Paper Co., 190

USPQ 106, 108 (TTAB 1975). Only when Applicant’s mark and Registrant’s mark are

14 Applicant’s Appeal Brief pp. 7-8 (7 TTABVUE 8-9) citing to its June 20 Request for
Reconsideration After Final Action at TSDR 4-10. Indeed, TSDR 4-10 are copies of online
articles

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Serial Nos. 87347454 and 87976304

visually compared in a side-by-side comparison does their slightly different spelling

become apparent. Consumers who retain only a general impression of trademarks are

not likely to notice this slight distinction in spelling, and will mistakenly assume that

the marks identify a common source.

The Board has often found that marks differing by only a single letter are

confusingly similar. See Apple Comput. v. TVNET.net Inc., 90 USPQ2d 1393, 1396

(TTAB 2007) (VTUNES.NET vs. ITUNES); Interlego AG v. Abrams/Gentile Entm’t

Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (“Obviously, the marks LEGO and MEGO

are extremely similar in that they differ simply by one letter.”); In re Total Quality

Grp. Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (“Applicant’s mark STRATEGYN and

registrant’s mark STRATEGEN are phonetic equivalents and differ by only one

letter.”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985)

(“Moreover, although there are certain differences between the [marks’ CAYNA and

CANA] in appearance, namely, the inclusion of the letter ‘Y’ and the design feature

in applicant’s mark, there are also obvious similarities between them. Considering

the similarities between the marks in sound and appearance, and taking into account

the normal fallibility of human memory over a period of time (a factor that becomes

important if a purchaser encounters one of these products and some weeks, months,

or even years later comes across the other), we believe that the marks create

substantially similar commercial impressions.”); In re Bear Brand Hosiery Co., 194

USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and the cited mark

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Serial Nos. 87347454 and 87976304

‘KIKI’ differ only in the terminal letter of each mark . While differing in sound, the

marks are similar in appearance and have a somewhat similar connotation”).

Applicant also argues that the cited mark is highly suggestive and lacking in

distinctiveness.15 Applicant points to no evidence of third-party use, and attempts to

rely on third-party registrations arguing that the cited mark is weak based upon a

number of registrations incorporating the separate terms DERMA, ZONE and

SOLUTIONS.16 Inasmuch as these registrations are not of record, the record does not

demonstrate commercial weakness from third-party use, and does not show that

consumers are conditioned to distinguish among marks including Applicant’s

DERMAZONE & Design and Registrant’s DERMAZONE SOLUTIONS marks.

Thus, there is no evidence that shows customers are use to seeing marks

containing the terms “DERMA-” and “-ZONE” for the types of products identified in

the cited registration and subject applications. Or that the cited mark is so weak or

otherwise entitled to such a narrow scope of protection that customers would be

careful in distinguishing Registrant’s mark from Applicant’s mark. Even assuming

15 Applicant’s Appeal Brief p. 5 (7 TTABVUE 6).
16See Applicant’s Appeal Brief for Serial No. 87347454 p. 9 (7 TTABVUE 10) and Applicant’s
Appeal Brief for Serial No. 87976304 p. 10 (15 TTABVUE 11). See also the November 20,
2017 Responses to Office Action pp. 2-3, 6-7, TSDR 4-5, 8-9, filed in connection with Serial
Nos. 87347454 and 87976304.
In the Final Office Actions, the Examining Attorney advised Applicant that no registrations
were of record and that to make the registrations part of the record Applicant must submit
copies of the registrations or their electronic equivalent from the USPTO’s automated
systems, prior to appeal (see Final Office Actions of December 12, 2017). Inasmuch as
Applicant did not request remand in order to submit copies of the third-party registrations
referred to in Applicant’s Response to the Office Action, the Examining Attorney requested
that the Board disregard Applicant’s references to any third-party registrations. As set forth
above, we have granted such request and such registrations have not been considered.

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Serial Nos. 87347454 and 87976304

that Registrant’s mark is weak for the beauty care goods identified in its registration,

marks deemed weak are still entitled to protection against the registration by a

subsequent user of a similar mark for closely related goods. King Candy Co. v. Eunice

King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In re Max

Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); In re Chica Inc., 84

USPQ2d 1845, 1850 (TTAB 2007); In re Colonial Stores, Inc., 216 USPQ 793, 795

(TTAB 1982).

IV. Conclusion

Applicant’s mark and Registrant’s mark DERMAZONE

SOLUTIONS are very similar. The goods for which Applicant seeks to register its

mark are identical and otherwise related to the goods recited in the cited registration,

and the channels of trade and classes of customers are at minimum overlapping. Use

of those highly similar marks on goods that are identical in-part and otherwise closely

related creates a substantial likelihood that consumers may be confused as to the

source of the goods.

Decision: The refusals to register Applicant’s mark in Application

Serial Nos. 87347454 and 87976304 under § 2(d) of the Trademark Act are affirmed.

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