Alagio Corp.

Mailed: October 18, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Alagio Corp. ________ Serial No. 76638311 _______ Myron Amer of Myron Amer, P.C. for Alagio Corp. Gretta Yao, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Hairston, Grendel and Holtzman, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: An application has been filed by Alagio Corp. to register the mark ROCK HARD (in typed or standard character form) for goods ultimately identified as "hair spray" in Class 3.1 The trademark examining attorney has refused registration under Section 2(d) of the Trademark Act on the ground that applicant's mark, when applied to applicant's goods, so resembles

1 Serial No. 76638311, filed May 10, 2005, based on an allegation of first use and first use in commerce on January 1, 2005.

THIS DISPOSITION IS NOT CITABLE AS

PRECEDENT OF THE TTAB Serial No. 76638311 2 the marks in the following three registrations, all owned by the same entity, as to be likely to cause confusion. Registration No. 2453616 for the mark ROCK HARD NAILS (NAILS disclaimed), in standard character form, for "cosmetics, namely, nail polish, eye liner, lip liner, blush, lipstick[,] eyeshadow and mascara";2 Registration No. 2561676 for the mark shown below (NAILS disclaimed), for "cosmetics, namely, nail polish, lip liner, eye liner, blush, lipstick, eyeshadow and mascara" in Class 3;3 Registration No. 2759746 for the mark shown below (COSMETICS disclaimed), for "cosmetics, namely nail polish, eye liner, lip stick, eye shadow, blush, mascara, foundation, concealer, glitter, body lotion, lip gloss, lip liner and moisturizer" in Class 3.4 When the refusal was made final, applicant appealed. Briefs have been filed.

2 Issued May 22, 2001.

3 Issued April 16, 2002.

4 Issued September 2, 2003. Serial No. 76638311 3 Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Turning first to the marks, applicant argues that the marks are different in sound, appearance and connotation as a result of the presence of the words NAILS and COSMETICS in the registered marks. In particular, applicant argues that the public is not aware that those terms are disclaimed in the registrations and that the examining attorney has not explained why ROCK HARD is the dominant portion of the marks; that registrant's marks have three words whereas applicant's mark is two words; and that applicant's mark is a coined term while registrant's marks are suggestive of registrant's products. Applicant relies on a dictionary definition of "spray" as "liquid broken up into minute droplets and blown," and a definition of "hard" as "not soft; solid and firm to the touch,"5 arguing that the meanings of the

5 Applicant identifies the source of these definitions as "RANDOMHOUSE WEBSTER'S College Dictionary [sic]" but has not submitted copies of the Serial No. 76638311 4 two words "are almost opposites." (Response dated February 17, 2006 at 1-2.) Applicant appears to contend that ROCK HARD in registrant's marks refers to the "hard" containers that dispense registrant's products but that ROCK HARD has no meaning in relation to applicant's "spray" product. While marks must be considered in their entireties, it is well settled that "there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). When we compare applicant's mark ROCK HARD with registrant's marks ROCK HARD NAILS, ROCK HARD NAILS and design, and ROCK HARD COSMETICS and design in their entireties, giving appropriate weight to the features thereof, we find that the marks are highly similar in sound, appearance, meaning and commercial impression, and that the differences in the marks are far outweighed by their similarities. Applicant's entire mark is the phrase ROCK HARD. The same phrase, ROCK HARD, is visually and aurally the most significant portion of each of the registered marks. While the disclaimed and descriptive, if not generic, terms NAILS and COSMETICS in relevant pages from the dictionary. Nevertheless, there is no dispute as to the meanings of these words and we accept that the words are defined as applicant claims. Serial No. 76638311 5 registrant's marks are not ignored in the analysis, the fact is that consumers are more likely to rely on the nondescriptive portion of registrant's marks, that is, the phrase ROCK HARD as an indication of source. See In re National Data Corp., supra at 751 ("That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark"). See also, e.g., In re Chatam International Incorporated,

380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("Because

ALE [in the mark GASPAR'S ALE for beer and ale] has nominal commercial significance, the Board properly accorded the term less weight in assessing the similarity of the marks under DuPont"); and In re Dixie Restaurants Inc., 105 F.3d 1405, 1407,

41 USPQ2d 1531 (Fed. Cir. 1997) (dominant portion of applicant's mark THE DELTA CAFE and design (CAFE disclaimed) for restaurant services, is DELTA). Similarly, the words NAILS and COSMETICS in the registered marks are of little trademark significance and do not serve to distinguish applicant's and registrant's marks in sound or appearance. As to the two cited marks ROCK HARD NAILS and ROCK HARD

COSMETICS that include designs, it is the wording itself, rather than the design elements in those marks, that is more likely to have a greater impact on purchasers and be remembered by them. See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Serial No. 76638311 6 Cir. 1983) ("in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed"). The word portion of a composite word and design mark is generally accorded greater weight because it is used to call for and refer to the goods. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). See also, e.g., In re Dixie Restaurants Inc., supra. This is particularly true where, as here, the design elements do nothing to add to or change the commercial impression created by the wording, ROCK HARD NAILS and ROCK HARD COSMETICS, alone. In addition, because applicant's mark ROCK HARD is presented in typed or standard character form, the words could reasonably be displayed in the same style and manner as ROCK HARD in the two registered marks, thereby increasing the visual similarity of applicant's and registrant's marks. See Phillips Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971); and

INB National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992). The fact that ROCK HARD may have no meaning in relation to the spray component of applicant's product is not relevant, and we disagree that the phrase would be perceived as referring to the containers for registrant's goods as applicant appears to contend. We instead find that ROCK HARD conveys the same meaning and creates the same commercial impression in relation to both applicant's hair spray and registrant's cosmetics, more or less Serial No. 76638311 7 suggesting in each mark the long-lasting qualities of the respective products. We turn next to a consideration of the goods. Applicant argues that its product, hair spray, is "radically physically different or diverse" from registrant's cosmetic products. However, the question is not whether purchasers can differentiate the goods themselves but rather whether purchasers are likely to confuse the source of the goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, it is not necessary that the goods of the applicant and registrant be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that the goods would be encountered by the same persons under circumstances that could, because of the similarity of the marks used thereon, give rise to the mistaken belief that the goods emanate from or are associated with, the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Registrant's goods are cosmetic products which consist of or include in each of the cited registrations nail polish, eye liner, lip liner, blush, lipstick, eyeshadow and mascara. Hair spray is a cosmetic product as well. We take judicial notice of the definition of "cosmetics" from The Columbia Encyclopedia Serial No. 76638311 8 (Sixth Edition 2001-05) as "preparations externally applied to change or enhance the beauty of skin, hair, nails, lips, and eyes."6 In any event, the respective products are all closely related personal beauty care products. The examining attorney has submitted several use-based, third-party registrations showing that, in each instance, a single entity has adopted the same mark for hair spray or hair care preparations, on the one hand, and for one or more of the cosmetic items listed in the cited registrations, on the other.7 Although third-party registrations are not evidence that the marks shown therein are in commercial use or that the public is familiar with them, they serve to suggest that the goods listed therein may emanate from a single source. See In re Albert Trostel & Sons Co., supra, and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). Moreover, in the absence of any limitations in the respective identifications of goods, we must presume that the goods are sold in all the normal channels of trade to all the usual purchasers for such goods, and that the channels of trade

6 Obtained from www.bartleby.com. See also The Penguin English Dictionary (2000) (obtained from xreferplus.com) defining "cosmetic" as "a preparation designed to be applied to the skin or hair to improve its appearance or texture." The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).

7 Applicant's objection to this evidence as untimely is not understood. The third-party registrations listed in the examining attorney's brief were properly made of record with the first Office action. Serial No. 76638311 9 and purchasers for these closely related beauty care products would be the same. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). We also note that the Internet evidence submitted by the examining attorney shows that hair styling preparations along with other cosmetic products are offered on the same retail websites, including beautyclicks.com and the websites for Aveda and Hair Care USA. Furthermore, considering that hair spray and other cosmetic products such as lipstick and mascara are relatively inexpensive, ordinary consumer items, they are therefore likely to be purchased casually and on impulse, thus increasing the risk of confusion. Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985). In view of the foregoing, we find that purchasers familiar with registrant's cosmetics provided under its marks ROCK HARD NAILS, ROCK HARD NAILS (with design), and ROCK HARD COSMETICS (with design), are likely to believe, upon encountering applicant's very similar mark ROCK HARD for hairspray, that the mark identifies an additional product in registrant's line of cosmetics or that the respective products are otherwise in some way associated or connected with the same entity. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.