Alberto-Culver Co.v.Han Beauty, Inc. and Trevive, Inc.

Trademark Trial and Appeal Board

Nov 3, 1999

No. 91099090 (T.T.A.B. Nov. 3, 1999)

Hearing: Paper No. 36
March 10, 1999 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Alberto-Culver Company
v.
Han Beauty, Inc. and Trevive, Inc.
_____
Opposition No. 99,090
to application Serial No. 74/519,598
filed on May 3, 1994
_____
Raymond I. Geraldson, Jr., Douglas N. Masters and Bradley L.
Cohn of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson
for Alberto-Culver Company.
Charles T.J. Weigell and Lori N. Boatright of Blakely,
Sokoloff, Taylor & Zafman for Han Beauty, Inc. and Trevive,
Inc.
______
Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Trevive, Inc. to
register the mark shown below
Opposition No. 99,090
2
for “hair care products, namely, hair shampoo, hair
conditioner, hair gel, and hair spray.”1
Registration has been opposed by Alberto-Culver Company
under Section 2(d) of the Trademark Act on the basis of
likelihood of confusion. As grounds for opposition, opposer
asserts that applicant’s mark, when used in connection with
applicant’s goods, so resembles opposer’s previously used
and registered TRES- prefix marks, including TRESEMME, for a
variety of hair care products as to be likely to cause
confusion.2
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; status and title copies of opposer’s
pleaded registrations; and stipulated trial testimony by
declarations, with related exhibits, submitted by the
parties on May 11, 1998. Opposer and applicant filed briefs
on the case, and both were represented by counsel at an oral
hearing held before the Board.

1 Application Serial No. 74/519,598, filed May 3, 1994, alleging
dates of first use of February 1, 1994. The words “Nutrients”
and “Hair” are disclaimed. The application also includes the
following statement: “The French wording ‘tres vive’ means ‘full
of life.’” The application originally was filed by Han Beauty,
Inc. Pursuant to an assignment of the application, Trevive, Inc.
was joined as a party defendant. The joined defendants will be
referred to herein as “applicant.”
2 Opposer added, by way of an amended notice of opposition, a
claim of abandonment. In a summary judgment decision dated July
21, 1997, the Board granted summary judgment on this ground in
favor of applicant.
Opposition No. 99,090
3
Opposer is engaged in the manufacture and sale of a
wide variety of health and beauty aids, including hair care
products. Opposer markets a range of hair care products
under its mark TRESEMME. Through the years, opposer has
expanded its product line and, in connection therewith, has
used several other TRES- prefix marks. Opposer’s products
are sold by distributors to retail outlets for direct sales
to consumers and to beauty salons for use in the salons and
resale to salon customers. The products have been promoted
through advertisements in publications such as Vogue, Elle,
People and Modern Salon, and through commercials on
television and radio. Opposer also promotes its products at
trade shows. Since 1977, sales of opposer’s products under
its TRES- prefix marks have exceeded $450 million.
Advertising expenditures, since 1984, have totaled more than
$20 million.
Applicant’s hair care products are sold primarily to
hair salons for resale to customers. The products have been
promoted through trade shows, and in advertisements in trade
publications, including Modern Salon and American Salon.
With respect to priority of use, there is no issue.
Opposer has made of record status and title copies of the
following pleaded registrations: TRESEMME for hair spray,
permanent wave, hair conditioners, hair thickeners, wig
sprays, crème lotion developer, wig cleaners and hair
Opposition No. 99,090
4
shampoos; TRESPAC for protein hair conditioning treatment;
TRESSPRAY for hair styling spray and sculpting spritz;
TRESGELEE (stylized) for hair styling gel; TRESWAVE for hair
permanent wave preparation; TRESSHINE for hair conditioning
mist for treating frizzy hair; and TRESHOLD (stylized) for
hair spray.3 In view of opposer’s ownership of these valid
and subsisting registrations for its marks, there is no
issue with respect to opposer’s priority. King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
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, two key considerations are the
similarities between the marks and the similarities between

3 Although the record includes a status and title copy of
Registration No. 1,684,978 for the mark TRESGLAZE for hair
styling and sculpting liquid, the Board’s check of Office records
shows that this registration has since been canceled. Moreover,
we note the statement of Lucia Esposito, opposer’s product
manager, professional division, that opposer has discontinued
sales under the mark. (declaration, no. 12) When a federal
registration owned by a party has been properly made of record in
an inter partes proceeding, and there are changes in the status
of the registration between the time it was made of record and
the time the case is decided, the Board, in deciding the case,
will take judicial notice of, and rely upon, the current status
of the registration, as shown by the Office records. Royal
Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc.,
204 USPQ 144 (TTAB 1979); and TBMP §703.02(a). Accordingly,
Opposition No. 99,090
5
the goods. We will first focus on these factors, and then
will consider the remaining relevant du Pont factors.
Insofar as the goods are concerned, the parties
stipulated that “[t]he applied for goods of applicant and
opposer’s goods are related for purposes of determining
whether a likelihood of confusion exists.” Indeed, both
parties’ marks are used in connection with identical hair
care products, namely hair shampoo, hair conditioner, hair
gel and hair spray. The goods, as identified in opposer’s
registrations and applicant’s application, move through the
same channels of trade to the same classes of purchasers.
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir.
1987). Further, these hair care products appear to be
relatively inexpensive and they likely would be purchased on
impulse.
We next turn to consider the marks. Given the identity
in part between the parties’ goods, we note, at the outset,
that when marks are applied to identical goods, “the degree
of similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). We also note that the

Registration No. 1,684,978 has not been considered in reaching
our decision.
Opposition No. 99,090
6
parties have stipulated to the fact that opposer has created
a family of TRES- prefix marks.
In comparing the marks, we recognize that the
“Nutrients for the Life of Your Hair” (“Nutrients” and
“Hair” disclaimed) portion of applicant’s mark cannot be
ignored. Giant Food, Inc. v. National Food Service, Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Although the
marks must be compared in their entireties, which include
this phrase in applicant’s mark, there is nothing improper
in giving more weight, for rational reasons, to a particular
portion of a mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this case, we have
given more weight to the TREVIVE portion of applicant’s mark
because of the subordinate nature of the phrase cited above.
This is so because the phrase is suggestive and appears in
much smaller type than does the TREVIVE portion.
The dominant TREVIVE portion of applicant’s mark sounds
similar to the members of opposer’s TRES- prefix family of
marks. The record includes the declaration of Peter V.
Conroy, Jr., a professor of French at the University of
Illinois, Chicago. Professor Conroy states, in relevant
part, the following:
Based upon its construction and
appearance, I believe the term “Tre
Vive” will be perceived as a French word
or phrase meaning very lively or very
alive, and pronounced TRAY-VIVE. TRE
would be understood or heard as
Opposition No. 99,090
7
phonetically equivalent to the French
adverb TRES, meaning very; vive is an
adjective meaning lively.
TRESemme´ and the other terms beginning
with TRES also are French in sound and
appearance and would be perceived as
French or French-derived terms. As
noted above, TRES is an adverb meaning
very, and it is usually without an
accent when written in capital letters.
The use of an accent over the final “e”
in Tresemme´ gives the term a French
appearance. “Gelee” and “mousse” are
French words and would be perceived as
such.
Since the “s” in Tres is silent, TRES
and TRE are phonetically equivalent.
TRES is pronounced as TRAY.
Although prior caselaw instructs that there is no correct
pronunciation of a trademark, our own sense is that
Professor Conroy’s views are correct in that opposer’s marks
and the TREVIVE portion of applicant’s mark sound like and
look like French terms or French-derived terms. Opposer has
stated that although opposer’s first mark TRESEMME was
derived from the term “tress” (a tress of hair) and the
surname (Emme) of an employee who worked for the prior owner
of the mark, opposer’s later marks “exploit the popularity
of European hair styling products by employing the formative
TRES meaning ‘very’ in French, and using that formative to
create French sounding marks.” (opposer’s response,
interrogatory no. 1)4 Opposer has used, on at least one

4 We also note Ms. Esposito’s statement that opposer’s second
mark is pronounced as “TRESS-PAC.”
Opposition No. 99,090
8
occasion, various TRES- slogans to promote its products.
The record includes an advertisement for opposer’s TRESEMME
brand product which is promoted as “Tres Professional Tres
European Tres Chic.” Ms. Esposito also stated that opposer
sells its products in black containers with the word
“European” on labels so as to enhance the “European” image
of opposer’s products.
In this connection, we also note the testimony of Sal
Romeo, national sales director for the products sold under
applicant’s mark, regarding the selection of the mark:
I just think [Trevive] had almost a
continental French flare to it which I
think is nice, plays very nice in the
American market right now and I think it
is good and then, you know, as we got
into it, you know, the word “vive” is
life and life is important to hair.
If there is no life to hair, it dies.
Full of life. So it was a lot of things
but I think that the word “vive,” I
think everybody would remember the word
vive. Whether you speak French or not,
people remember that word vive even
though it may not mean life but in
people’s minds that is what it means.
So I just liked the way it sounded.
Also of record is evidence of applicant’s use of the marks
TREVOR SORBIE PROFESSIONAL and design, and TRESSA and
design, and copies of printouts from three Internet websites
showing different third-party uses of PRO-TRESS, VITATRESS
and TRESSA in connection with hair care products. This

Opposition No. 99,090
9
evidence does not compel a different result in this case.
We acknowledge the suggestiveness of the term “tress”
(meaning a long lock of hair) as applied to hair care
products. Nonetheless, there is no evidence regarding the
extent of use of these marks by applicant or by any of the
three third parties. In sum, the evidence is of limited
probative value to support applicant’s position. Roffler
Industries, Inc. v. KMS Research Laboratories, Inc., 213
USPQ 258, 262 (TTAB 1982).
We find that applicant’s mark, when considered in its
entirety, is sufficiently similar to opposer’s family of
TRES- prefix marks in terms of sound and overall commercial
impression that, when applied to identical, relatively
inexpensive hair care products, confusion is likely to occur
in the marketplace. In making our determination, we have
kept in mind the normal fallibility of human memory over
time and that the average consumer normally retains a
general, rather than a specific, impression of trademarks
encountered in the marketplace.
One last point merits mention. Opposer asserts in its
brief that applicant adopted its mark in bad faith.
According to opposer, “[i]t is reasonable to infer that
[applicant’s] selection of such a similar mark in the face
of applicant’s own experience as a merchant of opposer’s
products can only be attributed to a desire to exploit the
Opposition No. 99,090
10
goodwill associated with opposer’s TRES- family of marks.”
Contrary to opposer’s contention, we agree with applicant
(brief, pp. 17-18) that the record does not support such a
finding.
To the extent that any of the points raised by
applicant raise a doubt on the issue of likelihood of
confusion, such doubt must be resolved in favor of the prior
registrant. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2
(CCPA 1977).
Decision: The opposition is sustained and registration
to applicant is refused.
R. F. Cissel
T. J. Quinn
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board