Thursday, August 13, 2015

TTAB Test: Are "THE PERFECT FACE" and "PARFAIT VISAGE" Confusable for Skin Care Products?

The USPTO refused registration of the mark THE PERFECT FACE for various cosmetic products, including creams for skin care, in International Class 3, finding the mark likely to cause confusion with the registered mark PARFAIT VISAGE for "pharmaceutical preparations in the form of topical ointments, namely, skin moisturizers and skin cleansers; skin cell growth stimulators; antivirals; antibacterial, and antifungal agents, namely, pharmaceuticals, natural oils, vitamins, minerals and hand washes" in International Class 5. The English translation of PARFAIT VISAGE, according to the cited registration, is "perfect face." The Board found the goods to be related, based on third-party registration evidence, but what about the marks? Are they confusable? In re Danielle Doyle Sheeb, Serial No. 85953038 (August 11, 2015) [not precedential].

The goods: The examining attorney contended that the term "cosmetic creams for skin care" in the subject application is broad enough to include skin products of the type listed by Registrant, but the Board found that cosmetics in Class 3 cannot include pharmaceutical preparations in Class 5, even if both include products that can be identified as "skin moisturizers and skin cleaners." However, third-party registrations covering both non-medicated cosmetics and medicated skin moisturizers and cleansers persuaded the board that the goods are related for purposes of Section 2(d).

The marks: Relying on dictionary definitions, the examining attorney maintained that, under the doctrine of foreign equivalents,  the ordinary American purchaser (which here refers to the ordinary American purchaser who is knowledgeable in French) would translate PARFAIT VISAGE as "perfect face." Moreover, in the cited registration the mark is translated as "perfect face."

Applicant argued that "The Perfect Face" would be "le visage parfait" in French, and that purchasers familiar with French would not confuse the two marks. The Board agreed that "Parfait Visage" is not an exact translation of "Perfect Face:" in addition to the transposition of the noun and the adjective, the French article "le" is missing.

Applicant also asserted that American purchasers would not stop and translate "Parfait Visage" into "Perfect Face" because the word "parfait" already has a well established meaning in the English language, as a tart dessert.

The Board observed that the doctrine of foreign equivalents is not absolute, and where the only similarity between the marks is connotation, "a much closer approximation is necessary ... to justify a refusal to register on that basis alone." It found that, because of the lack of equivalency due to the grammatically incorrect translation of the registered mark, and because of the English meaning of "parfait," the mark PARFAIT VISAGE is not such a close approximation to THE PERFECT FACE that the ordinary American purchaser would stop and translate the former into the latter. The Board therefore could not find that the marks convey similar overall commercial impressions.

Finding this first du Pont factor to be dispositive, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Well, how did you do? I see  you making a face! Perfect!

Text Copyright John L. Welch 2015.


At 8:14 AM, Anonymous Robert M. O'Connell, Jr. said...

Le wow.

At 9:17 AM, Anonymous Anonymous said...

Not sure I agree with this... transposition of the terms and the "THE" is not enough...

At 9:21 AM, Blogger JJ Fitzgerald said...

A merde decision.

At 9:28 AM, Blogger JJ Fitzgerald said...

Mon dieu -- quel jugement merdeux.

At 10:49 AM, Blogger David Silverman said...

This is exactly the type of case I want to keep for reference (even though nonprecedential) should I be faced with a foreign equivalents refusal. Merci.

At 1:14 PM, Anonymous Alex (former examiner) said...

The DFE is applied so inconsistently that there must be a case supporting whatever argument you need - kind of like statistics.


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