This Opinion is Not a
`Precedent of the TTAB
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`Mailed: September 15, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`————
`In re vivawave Co., Ltd.
`_____
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`Serial No. 88848727
`_____
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`
`Sang Ho Lee of Novick, Kim & Lee, PLLC
` for vivawave Co., Ltd.
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`James Prizant, Trademark Examining Attorney, Law Office 128,
`Travis Wheatley, Managing Attorney.
`_____
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`Before Kuhlke, Adlin and Coggins, Administrative Trademark Judges.
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`Opinion by Adlin, Administrative Trademark Judge:
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`Applicant vivawave Co., Ltd. seeks registration of the mark MOOD NARRATIVE,
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`in standard characters, for:
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`non-medicated skin care preparations being functional
`cosmetics; nail cosmetics; lip glosses; non-medicated lip
`balm; non-medicated make-up; cosmetic preparations for
`baths; body care cosmetics; beauty care cosmetics; non-
`medicated shampoos; non-medicated toiletry preparations;
`non-medicated cosmetic preparations for skin care; hair
`rinses; cosmetic creams; mask pack for cosmetic purposes;
`cosmetic oils; make-up removing preparations; cosmetics in
`Class 3; and
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`advertising services; marketing services; import-export
`agency services; promoting the goods and services of
`others by means of operating an on-line
`comprehensive shopping mall; business intermediary
`services relating to mail order by telecommunications,
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`

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`Serial No. 88848727
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`namely, the matching of potential private investors with
`entrepreneurs in the field of mail order who are in need of
`funding; publicity agents; retail store services
`featuring cosmetic utensils; wholesale store services
`featuring cosmetic utensils; sales agency services,
`namely, retail store services featuring goods owned
`by others for which applicant receives a commission
`upon the sale featuring cosmetic utensils; sales
`brokerage services, namely,
`facilitating transactions
`between buyers and sellers featuring cosmetic utensils;
`wholesale store services featuring cosmetics; retail
`store services featuring cosmetics; sales agency
`services, namely, retail store services featuring
`goods owned by others for which applicant receives
`a commission upon the sale featuring cosmetics;
`sales brokerage services, namely, facilitating transactions
`between buyers and sellers featuring cosmetics in Class
`35.1
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`The Examining Attorney refused registration as to the Class 3 goods under
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`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
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`mark so resembles the registered mark NARRATIVE COSMETICS, in standard
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`characters (“COSMETICS” disclaimed), for “theatrical make-up” in International
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`Class 3,2 that it is likely to cause confusion. The Examining Attorney also issued a
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`final partial refusal to register some of Applicant’s Class 35 services (those bolded
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`above) based on another registration.3 After the refusals became final, Applicant
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`1 Application Serial No. 88848727, filed March 26, 2020 under Section 44(d) of the Trademark
`Act, 15 U.S.C. § 1126(d), and later amended to Section 44(e), 15 U.S.C. § 1126(e), based on
`Korean Registration No. 40-1734395.
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`2 Registration No. 5825710, issued August 6, 2019.
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`3 Registration No. 2579928.
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`2
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`Serial No. 88848727
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`appealed only the refusal to register its Class 3 goods. Applicant and the Examining
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`Attorney filed briefs.
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`I. Examining Attorney’s Objection Sustained
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`The Examining Attorney’s objection, 6 TTABVUE 4,4 to Exhibits 1 and 4 to
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`Applicant’s Appeal Brief is sustained, because the materials were not introduced
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`until after Applicant appealed. Trademark Rule 2.142(d) (“The record should be
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`complete prior to the filing of an appeal. Evidence should not be filed with the Board
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`after the filing of a notice of appeal.”).
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`II. Likelihood of Confusion
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`Our determination under Section 2(d) is based on an analysis of all of the
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`probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
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`de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”)
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`(setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d
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`1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor
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`about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
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`1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion
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`analysis, two key considerations are the similarities between the marks and the
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`similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
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`544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
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`
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`4 Citations to the appeal record are to TTABVUE, the Board’s online docketing system. The
`number preceding TTABVUE corresponds to the docket entry number, and any numbers
`following TTABVUE refer to the page(s) of the docket entry where the cited materials appear.
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`3
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`Serial No. 88848727
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`by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
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`the goods and differences in the marks.”).
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`A. The Goods, Their Channels of Trade and Classes of Consumers
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`The goods are legally identical in part because Applicant’s “non-medicated make-
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`up” is broad enough to encompass Registrant’s “theatrical make-up.” It is sufficient
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`for a finding of likelihood of confusion if legal identity is established for any item
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`encompassed by the identification of goods in a particular class. Tuxedo Monopoly,
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`Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
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`Because the goods are legally identical in part, we presume that the channels of
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`trade and classes of purchasers for those goods also overlap. In re Viterra Inc., 671
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`F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
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`evidence regarding channels of trade and classes of consumers, the Board was
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`entitled to rely on this legal presumption in determining likelihood of confusion); Am.
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`Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101
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`USPQ2d 1022, 1028 (TTAB 2011).
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`The legal identity of the goods and their overlapping channels of trade and classes
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`of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
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`also reduce the degree of similarity between the marks necessary to find a likelihood
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`of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
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`at 1260; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
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`B. The Marks
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`We compare the marks “in their entireties as to appearance, sound, connotation
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`and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
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`4
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`Serial No. 88848727
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`Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
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`(quoting DuPont, 177 USPQ at 567). Obviously, the marks are similar because they
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`share the word NARRATIVE, but different because in Applicant’s mark NARRATIVE
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`is preceded by MOOD, whereas in Registrant’s mark NARRATIVE is followed by
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`COSMETICS. Ultimately, we find that the similarities between the marks outweigh
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`the differences.
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`The shared term NARRATIVE is the most distinctive and dominant portion of
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`Registrant’s mark, for two reasons. First, the mark’s trailing term COSMETICS is
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`generic for or at best highly descriptive of “theatrical make-up,” and disclaimed. The
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`term is therefore entitled to less weight in our analysis. Cunningham v. Laser Golf
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`Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
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`terms, this court has noted that the ‘descriptive component of a mark may be given
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`little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
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`Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); see also In re
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`Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA,
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`not the disclaimed term CAFÉ, is the dominant portion of the mark THE DELTA
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`CAFÉ). Second, the word NARRATIVE is the dominant portion of Registrant’s mark
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`because it comes first. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
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`1049 (Fed. Cir. 2018) (“the identity of the marks’ two initial words is particularly
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`significant because consumers typically notice those words first”); Century 21 Real
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`Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
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`1992); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
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`5
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`Serial No. 88848727
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`(“it is often the first part of a mark which is most likely to be impressed upon the
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`mind of a purchaser and remembered”); see also, Palm Bay Imps. Inc., 73 USPQ2d at
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`1692.
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`We take judicial notice that the shared term NARRATIVE means “a story or a
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`description of a series of events” or “a particular way of explaining or understanding
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`events.”5 Thus, because COSMETICS is not source identifying in Registrant’s mark
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`but instead merely names the types of goods Registrant sells, the meaning and
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`commercial impression conveyed by Registrant’s mark derives primarily from the
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`word NARRATIVE. In the context of Registrant’s goods, that term conveys a line of
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`theatrical make-up products that depicts or explains events. More specifically, when
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`used for the identified “theatrical make-up,” NARRATIVE COSMETICS conveys the
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`commercial impression that Registrant’s make-up will enable actors or other
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`theatrical performers to better convey events or stories, presumably by highlighting
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`or changing the actors’ or performers’ facial expressions or appearance.
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`The meaning and commercial impression conveyed by Applicant’s mark is
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`remarkably similar. We take judicial notice that “mood” means “the way you feel at
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`a particular time.”6 Applicant seems to agree with this definition. November 8, 2020
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`5 dictionary.cambridge.org/us/dictionary/English/narrative. The Board may take judicial
`notice of dictionary definitions, including online dictionaries that exist in printed format or
`have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
`aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome
`Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).
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`6 dictionary.cambridge.org/us/dictionary/English/mood.
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`6
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`Serial No. 88848727
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`Office Action response TSDR 107 (“The term ‘mood’ in Applicant’s Mark, which we
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`often think of as being a synonym for emotion or feeling ….”). Thus, in the context of
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`Applicant’s “non-medicated make-up,” MOOD NARRATIVE conveys a product that
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`helps convey the wearer’s mood. Applicant concedes as much in its Appeal Brief. 4
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`TTABVUE 8 (“make-up can be applied in a manner that reflects one’s mood (e.g.,
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`glitter, festive eye makeup)”). Similarly, MOOD NARRATIVE conveys that the goods
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`may help the user/wearer depict or explain events or stories related to how he or she
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`feels at the time, again by highlighting or changing the wearer’s facial expression or
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`appearance. Id. (“Applicant’s mark ‘MOOD NARRATIVE’ suggests that Applicant’s
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`makeup can be used to express or narrate one’s feelings.”).
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`It is settled that similarity in appearance, sound, meaning or commercial
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`impression alone may be enough to establish that the marks are confusingly similar.
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`In re 1st USA Realty Prof., Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); In re White
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`Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). But here, the marks’ similarities do
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`not end with their meanings and commercial impressions. The shared word
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`NARRATIVE makes the marks somewhat similar in appearance and sound as well,
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`especially because the second word in Registrant’s mark is merely a non-source
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`identifying generic or highly descriptive term on which consumers are unlikely to
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`focus.
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`We recognize that MOOD comes first in Applicant’s mark, and as explained above,
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`7 Citations to the application file are to the USPTO’s Trademark Status & Document
`Retrieval (“TSDR”) online database, by page number, in the downloadable .pdf format.
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`7
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`Serial No. 88848727
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`it could therefore be perceived as the dominant feature of Applicant’s mark. But in
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`this case, as explained above, the word “MOOD” specifies the type of “NARRATIVE”
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`conveyed by the mark as a whole – a narrative about how the user feels at a particular
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`time. Thus, the word “MOOD” is connected and draws attention to the word
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`“NARRATIVE,” such that the mark as a whole is likely to be perceived as a phrase.
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`In other words, consumers may not separate the mark into dominant and non-
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`dominant components, but instead view the mark as an integrated whole.
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`Because the marks are so similar, especially in the meaning and commercial
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`impression they convey, consumers familiar with NARRATIVE COSMETICS
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`theatrical make-up who encounter MOOD NARRATIVE cosmetics could very well
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`assume that the products come from the same source. Indeed, consumers could
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`perceive one of these cosmetic/make-up products as a product line extension of the
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`other, or one of these marks as a brand extension of the other.
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`We have considered the differences between the marks, but we must consider
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`whether these differences are “likely to be recalled by purchasers seeing the marks
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`at spaced intervals,” i.e. consumers who encounter one party’s mark and do not
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`encounter the other’s until later. Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477
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`F.2d 586, 177 USPQ 573, 574 (CCPA 1973). Thus, we keep in mind: (1) “the fallibility
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`of memory over a period of time;” and (2) that the “average” purchaser “normally
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`retains a general rather than a specific impression of trademarks.” Sealed Air Corp.
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`v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). See also In re St. Helena Hosp.,
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`774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks must be considered
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`8
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`Serial No. 88848727
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`in light of the fallibility of memory”) (citation, internal quotation marks, and ellipsis
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`omitted). Here, the marks convey such similar meanings and commercial
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`impressions, and look and sound similar enough, that when used for legally identical
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`products confusion is likely, especially among consumers encountering the marks “at
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`spaced intervals.”8
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`III. Conclusion
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`The goods are legally identical in part, the channels of trade and classes of
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`consumers are presumed to overlap, and the marks are more similar than dissimilar.
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`Confusion is likely.
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`Decision: The refusal to register Applicant’s mark for the identified Class 3 goods
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`under Section 2(d) of the Trademark Act is affirmed. The application will proceed
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`with respect to the following Class 35 services not subject to the partial refusal:
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`8 Applicant introduced third-party Registration No. 5693644 for the mark IDENTITY
`NARRATIVE for cosmetics and related products, November 8, 2020 Office Action response
`TSDR 13-14, pointing out that it coexists with the two registrations cited against its
`application (only one of which remains relevant on appeal). Id. at 10. However, neither the
`existence of third-party registrations nor any of the evidence in their prosecution records
`(when it is of record) compels a specific result in later, allegedly analogous cases. See, e.g.,
`Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1377 (Fed.
`Cir. 2018) (“these prior registrations do not compel registration of [Applicant’s] proposed
`mar[k]”) (citing In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016)); In re Shinnecock
`Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-
`party registrations should have been refused registration under section 1052(a), such errors
`do not bind the USPTO to improperly register Applicant’s marks.”). Furthermore, Applicant’s
`attempt to rely on additional third-party registrations by merely listing them in its Appeal
`Brief, 4 TTABVUE 6, rather than properly and timely introducing them into the record, is
`unavailing. The IDENTITY NARRATIVE registration, standing alone, is not enough to
`establish that the cited mark is conceptually weak.
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`9
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`Serial No. 88848727
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`“advertising services; marketing services; import-export agency services; business
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`intermediary services relating to mail order by telecommunications, namely, the
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`matching of potential private investors with entrepreneurs in the field of mail order
`
`who are in need of funding; publicity agents; sales brokerage services, namely,
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`facilitating transactions between buyers and sellers featuring cosmetic utensils; sales
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`brokerage services, namely, facilitating transactions between buyers and sellers
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`featuring cosmetics.” See Trademark Rule 2.65(a)(1); TMEP § 718.02(a).
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`10
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`