Friday, May 15, 2009

Lacking Proof that Cosmetics and Medicated Lotions Are Related, TTAB Tosses Out 2(d) Refusal of "REVIVE WITH THI"

Reversing a Section 2(d) refusal, the Board found the mark REVIVE WITH 'THI' for "medicated lotions for hand, body and foot" not likely to cause confusion with the registered mark THI2 and the mark THI in the Stylized form shown to the right, for "adhesives for affixing false eyelashes; cosmetics; false eyelashes." The PTO failed to provide any evidence that the involved goods are related, and the Board was unable to draw "any such conclusion based only on the language of the respective identifications of goods." In re Daniel T. Phuoc, Serial No. 77356068 (April 29, 2009) [not precedential].

Applicant Phuoc contended that the phrase "revive with ..." sufficiently distinguishes the marks, asserting that "revive" is emphasized because it is the first word in his mark and because it "suggests that the product heals and restores something that is damaged, unlike the impression of the registered mark." Phuoc also maintained that REVIVE WITH THI "has a rhyming quality" which "gives a separate impression apart from the two individual words," and that the rhyming quality "adds a certain phonetic distinction that THI alone does not."

The Board, however, disagreed. It pointed out that the phrase "revive with ..." pertains directly to the word THI, suggesting that THI will "restore" the skin or emotional state of the user of the product. Thus THI "is the focus of applicant's mark." The Board rejected the notion that there is any rhyme or rhythm to Phuoc's mark that consumers will recognize.

Applicant’s mark is likely to be perceived as a derivative of, or somehow related to, the registered mark THI, if used in connection with related or similar goods or services. While the marks are different in sound and appearance due to the addition of the phrase “revive with …” in applicant’s mark, we find that the connotations and commercial impressions of the respective marks are substantially similar and, thus, the marks in their entireties are substantially similar.

As to the goods, however, Phuoc had better luck. The PTO submitted a definition of "cosmetics" as "substances put on the face or body that are intended to improve its appearance or quality," arguing that the involved goods all fall within that definition and therefore are related. In support of that proposition, the PTO submitted ten third-party registrations allegedly for "cosmetic-type goods and medicated lotions."

Not so fast, said the Board. It agreed with Phuoc that the PTO's definition of cosmetics was "extremely broad," and it took judicial notice of another definition of "cosmetic" as "of, relating to, or making for beauty esp. of the complexion: beautifying."

In other words, "cosmetics" are, in everyday parlance, "make-up," and are usually applied to the face. Clearly, the "false eyelashes" identified in the cited registrations are "cosmetics." However, we do not agree that applicant’s medicated lotion is likely to be considered a "cosmetic."

The Board noted that the PTO's third-party registrations separately identify "medicated lotions/skin care products" and "cosmetics." Moreover, even if medicated lotion were a cosmetics, there is no per se rule that all cosmetics are related.

The third party registrations were not probative because they "do not include both medicated lotions and either cosmetics, false eyelashes or adhesives for such."

In short, the Board found the record "entirely devoid" of evidence that the involved goods are related, and so the Board reversed the refusal.

TTABlog comment: I wonder if there is any such thing as a "medicated eyelash lotion" on the market? Seriously, though, are there not medicated beauty products? Are beauty and medication mutually exclusive? I guess these are moot points, because even if there are such products, the PTO did not get them into the record.

Text Copyright John L. Welch 2009.


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