Test Your TTAB Judge-Ability: Is ULTRA SUN for Sunscreen Confusable with ULTRA SUN for Sun Protective Clothing?

New TTAB Judge Francie R. Gorowitz wrote the Board's opinion in this Section 2(d) appeal. The PTO refused registration of the mark ULTRA SUN for sun-screen preparations, finding it likely to cause confusion with the registered mark ULTRASUN for sun protective clothing. Applicant argued that the registrant's goods are sold as medical devices, that its own sunscreen will cost at last $26.00, and that the cited registration issued despite the existence of a prior registration (now cancelled) for ULTRA SUN for a sun care preparation. How do you think this came out? In re Ultrasun AG, Serial No. 79089118 (November 20, 2012) [not precedential].

Not surprisingly, the Board found the marks to be virtually identical in appearance, and identical in sound, connotation, and commercial impression.

As to the goods, the Board observed that both sunscreen and sun protective clothing are used for the same purpose, and the products are complementary. Examining Attorney Marcie R. Frum submitted a number of webpages for websites offering both sunscreen and sun protective clothing, sometimes under the same mark. Therefore the duPont factors concerning the similarity of the goods and the channels of trade also favor a finding of likely confusion.

Applicant argued that its goods and registrant's goods will be available at different stores and websites, but the Board pointed out that this argument is unavailing, since there are no limitations on channels of trade in the involved application or the cited registration.

Likewise, the conditions of purchase are determined by the goods as identified in the application and registration, and Applicant's assertion that the goods in the cited registration are "advertised as medical solutions and a medical device" is irrelevant because there is no such restriction in the registration.

Although Applicant may intend to sell is sunscreen for a minimum of $26.90, there is no such limitation in its identification of goods; its sunscreen may be sold at a much lower cost, and may even be purchased on impulse. "As a result, a purchaser who is aware of registrant's ULTRA SUN protective clothing, seeing ULTRA SUN on sunscreen preparations, is likely to simply assume a connection as to the source of the goods, without giving the purchase a great deal of thought." Therefore, this duPont factor also supported the Section 2(d) refusal.

Finally, Applicant pointed that the cited registration issued despite the existence of a (now-cancelled) Registration for the mark ULTRA SUN for sun care preparation. However, the Board observed once again that it must assess each mark and application on the record before it, regardless of prior actions taken by Examining Attorneys on other records.

Considering the relevant duPont factors, the Board found confusion likely and it affirmed the refusal.

TTABlog note: Well? Do you agree with the result? Why not?

Text Copyright John L. Welch 2012.