Max Mix-Produtos De Beleza Ltda-Epp

This Opinion is not a
Precedent of the TTAB

Mailed: March 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Max Mix-Produtos De Beleza Ltda-Epp
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Serial No. 87241105
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Vivian Ortiz Ponce of Marcas Estados Unidos for Max Mix-Produtos De Beleza
Ltda-Epp.
Yatsye I. Lee, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.

_____

Before Ritchie, Shaw and Greenbaum
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

Max Mix-Produtos De Beleza Ltda-Epp (“Applicant”) seeks registration on the

Supplemental Register1 of the mark PIELE, in standard characters, for “On-line

ordering services featuring cosmetics; On-line retail store services featuring

cosmetics; On-line wholesale store services featuring cosmetics; Retail stores

featuring cosmetics; Wholesale store services featuring cosmetics,” in International

1 Applicant amended its application to the Supplemental Register to overcome a Section
2(e)(1) refusal. Response to Office Action, dated April 2, 2018.
Serial No. 87241105

Class 35.2 The application includes the following translation: “The English

translation of ‘PIELE’ in the mark is ‘SKIN’.”

Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d), on the ground that Applicant’s mark, when used in connection with the

identified services, so resembles the mark PIEL BOUTIQUE, also in standard

characters and on the Supplemental Register, for “On-line retail store services

featuring a wide variety of consumer goods of others,” in International Class 35, as

to be likely to cause confusion, mistake or deception.3 The cited registration disclaims

“BOUTIQUE” and includes the following translation: “The English translation of

‘Piel’ in the mark is ‘Skin’.”

When the refusal was made final, Applicant appealed and requested

reconsideration. The request was denied and the appeal resumed. We affirm the

refusal to register.

I. Evidentiary Issue

Before proceeding to the merits of the refusal, we address an evidentiary matter.

With its Appeal Brief, Applicant submitted copies of two trademark registrations for

marks including the term PIEL that were not previously introduced into the record

during prosecution.4

2 Application Serial No. 87241105, filed on November 18, 2016 under Section 44(e) of the
Trademark Act, 15 U.S.C. § 1026(e), based on Brazilian Reg. No. 904731243 issued June 30,
2015.
3 Registration No. 4456786, issued December 24, 2013.
4 16 TTABVUE 9-10

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Serial No. 87241105

Relying on Rule 2.142(d), 37 C.F.R. § 2.142(d), the Examining Attorney objects to

the evidence submitted by Applicant with its Appeal Brief. Rule 2.142(d) states:

The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.

As set forth in the Rule, the record should be complete prior to the filing of the

appeal. If Applicant desired to introduce additional evidence after the appeal was

filed, it should have submitted a request to the Board to suspend the appeal and to

remand the application for further examination. Thus, we sustain the Examining

Attorney’s objection and the registrations attached to Applicant’s Appeal Brief will

not be considered. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011);

Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1207.01 (June

2018).

II. Likelihood of Confusion

Our determination of the issue of likelihood of confusion is based on an analysis

of all the probative facts in evidence relevant to the factors set forth in In re E. I. du

Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re

Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any

likelihood of confusion analysis, two key considerations are the similarities between

the goods or services and the similarities between the marks. See Federated Foods,

Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The

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Serial No. 87241105

fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences

in the essential characteristics of the goods [or services] and differences in the

marks.”).

A. The similarity or dissimilarity of the marks in their entireties

We begin with the first du Pont factor and consider the marks, comparing them

for similarities and dissimilarities in appearance, sound, connotation and commercial

impression. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our

analysis must be on the recollection of the average purchaser who normally retains a

general, rather than specific, impression of trademarks. Although we consider the

mark as a whole, “in articulating reasons for reaching a conclusion on the issue of

confusion, there is nothing improper in stating that, for rational reasons, more or less

weight has been given to a particular feature of a mark.” In re Nat’l Data Corp., 753

F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

Applicant’s mark is the word PIELE in standard characters. Registrant’s mark is

the wording PIEL BOUTIQUE, also in standard characters. Both PIELE and PIEL

translate to “skin.” The dominant portion of the marks is the term PIELE or PIEL.

Although we must consider the marks in their entireties, the wording BOUTIQUE in

Registrant’s mark is less significant because it is descriptive of Registrant’s services

and has been disclaimed. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,

1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or generic for a

party’s goods or services is typically less significant or less dominant when comparing

marks).

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Serial No. 87241105

Given that both PIELE and PIEL translate to “skin,” we find that both marks

convey the same commercial impression and connotation, namely of an online store

devoted to skin care products or cosmetics. The presence of the term BOUTIQUE in

Registrant’s mark does not change the commercial impression inasmuch as it

describes a type of retail establishment.

Regarding similarity in appearance and sound, both marks begin with the term

PIELE or PIEL which will likely be pronounced by United States consumers in a very

similar, if not identical, manner. Applicant argues that PIELE has two syllables

whereas PIEL has only one, but it is well settled that there is no correct pronunciation

of a mark. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

Even assuming that the mark in the cited registration may be pronounced with two

syllables, the marks are still pronounced similarly in dominant part, and when

considered as a whole. Nor does the presence of the term BOUTIQUE in Registrant’s

mark distinguish the marks in terms of sound because the first word is often used in

calling for the goods or services. See Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the

most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first

word in the mark and the first word to appear on the label). In addition, both marks

are similar in appearance because they are in standard characters and could be

displayed in similar fonts. See Viterra, 101 USPQ2d at 1909; see also 37 C.F.R.

§ 2.52(a).

Applicant argues that its mark is entitled to registration because marks on the

Supplemental Register are entitled to a narrower scope of protection. This argument

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Serial No. 87241105

is unpersuasive. Even taking into account some degree of conceptual and commercial

weakness of the translation, “skin,” the overall strong similarity of the marks result

in this factor supporting a finding of likelihood of confusion. “It has often been

emphasized that even weak marks are entitled to protection against confusion.” Hunt

Control Sys. Inc. v. Koninklijke Philips Elecs. N.V., 98 USPQ2d 1558, 1567-68 (TTAB

2011) (quoting 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) (“[E]ven suggestive or weak marks are entitled to protection from the

use of a very similar mark for legally identical services”); see also In re Clorox Co.,

578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and stain

remover held confusingly similar to STAIN ERASER, registered on the Supplemental

Register, for a stain remover).

In sum, given their resemblance in sound, appearance, connotation and

commercial impression, Applicant’s mark and the cited mark are similar. This du

Pont factor favors a finding of likelihood of confusion.

B. Similarity of the services, trade channels, and classes of purchasers

We next consider the similarity of Applicant’s and Registrant’s services, keeping

in mind that the services of the parties need not be identical or even competitive to

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

1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective services need only

be “related in some manner and/or if the circumstances surrounding their marketing

[be] such that they could give rise to the mistaken belief that [they] emanate from the

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

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Serial No. 87241105

USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d

1715, 1724 (TTAB 2007)).

Applicant’s services are retail, wholesale, and online store services featuring

cosmetics. Registrant’s services are “On-line retail store services featuring a wide

variety of consumer goods of others.” The Examining Attorney’s evidence establishes

that the wording “consumer goods” includes cosmetics.5 Thus, Registrant’s more

broadly worded online retail store services featuring consumer goods encompass

Applicant’s narrower online store services featuring cosmetics. See In re Hughes

Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly

worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly

identified ‘residential and commercial furniture.’”). The services, therefore, are

identical in part. It is sufficient for finding a likelihood of confusion if relatedness is

established for any item encompassed by the identification of services within a

particular class in the application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,

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

Considering the channels of trade and classes of purchasers, because the services

are identical in part and contain no limitations, it is presumed that they move in all

channels of trade normal for those services, and that they are available to all classes

of purchasers. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317,

5Attachments to October 2, 2017 Office Action, TSDR pp. 6-7; Attachments to February 27,
2017 Office Action, TSDR pp. 6-52; Attachments to October 2, 2017 Office Action, TSDR pp.
10-57; and Attachments to May 7 2018, Denial of Request for Reconsideration, TSDR pp. 5-
173.

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Serial No. 87241105

110 USPQ2d 1157, 1161 (Fed. Cir. 2014). See also Coach Servs., 101 USPQ2d at 1723

(absent limitation “goods [and services] are presumed to travel in all normal channels

. . . for the relevant goods [and services].”). In light of the evidence which

demonstrates that the services identified in both the registration and application

often are sold by the same source, we find the channels of trade or classes of

purchasers to be the same or similar. See In re Anderson, 101 USPQ2d 1912, 1919

(TTAB 2012).

Accordingly, we find the Examining Attorney’s evidence establishes that

Applicant’s services are related to Registrant’s services, that the respective services

travel in the same trade channels, and they are likely to be purchased by the same

consumers. See In re Albert Trostel, 29 USPQ2d at 1785-86. Moreover, Applicant does

not argue that the services, trade channels, and classes of purchasers are unrelated.

The du Pont factors relating to the similarity of the services, channels of trade, and

classes of purchasers favor a finding of likelihood of confusion.

C. Balancing the Factors

We have carefully considered all of the evidence and arguments of record relevant

to the pertinent du Pont likelihood of confusion factors. Given the similarity of the

marks, the overlapping nature of the services and their channels of trade and classes

of purchasers, we find that the Office has met its burden in showing a likelihood of

confusion between Applicant’s mark and the cited mark.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the

Trademark Act is affirmed.

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