Amadeus Marketing, S.A.v.Amadeus Salon, Inc.

Trademark Trial and Appeal Board

Sep 20, 2004

No. 91151180 (T.T.A.B. Sep. 20, 2004)

Mailed: September 20, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Amadeus Marketing, S.A.
v.
Amadeus Salon, Inc.
_____
Opposition No. 91151180 to application Serial No. 76252385
filed on May 7, 2001
_____
David A. Weinstein, Esq. for Amadeus Marketing, S.A.
Seth E. Freilich of Pillsbury Winthrop, LLP for Amadeus Salon,
Inc.
______
Before Quinn, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Amadeus Salon, Inc. has filed an application to
register the mark "AMADEUS" for "health spa services, namely,
skin care, body care, and hair care treatments."1
Amadeus Marketing, S.A. has opposed registration on the
ground that it "is and has been for many years engaged in the
offering, marketing, advertising and sale of hotel reservation
and travel agency services as well as promoting travel and
tourism worldwide and providing and leasing access to a worldwide
1 Ser. No. 76252385, filed on May 7, 2001, which alleges a date of
first use of the mark anywhere of June 1987 and a date of first use of
the mark in commerce of December 1987.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91151180
2
computerized system and data bank in the field of reservations
for lodging, hotels, and transportation"; that "[i]n connection
therewith Opposer has used in commerce ... the mark AMADEUS ...
prior to Applicant's date of first use of the trademark AMADEUS";
that opposer's mark "has not been abandoned"; that opposer "owns
United States Patent and Trademark Office Registration Nos.
1,457,753 and 1,802,387 which were granted on September 15, 1987
and November 2, 1993, respectively[,] for the trademark AMADEUS";
that such registrations "are prima facie evidence of Opposer's
exclusive right to use Opposer's Trademark in commerce in
connection with the services specified in the registrations";
that opposer's services under its mark "have been continuously
offered to the public through various channels of trade" and have
been advertised under such mark in the United States; that by
reason thereof, the public has come to recognize opposer's
"AMADEUS" mark "as signifying Opposer and its services"; and that
because applicant's "AMADEUS" mark "is confusingly similar to"
opposer's "AMADEUS" mark for opposer's services, applicant's use
of its mark in connection with applicant's services "is likely to
cause confusion, deception, and mistake."
Applicant, in its answer, has expressly admitted that
opposer "owns two design marks with Reg. Nos. 1,457,753 and
1,802,387," but has otherwise denied the remaining salient
allegations of the notice of opposition.2
2 While applicant has also alleged several putative "affirmative
defenses," including laches, in its answer, no evidence has been
offered with respect thereto and no argument concerning such defenses
Opposition No. 91151180
3
The record consists of the pleadings, including the
above-noted admission by applicant that opposer is the owner of
its two pleaded registrations, and the file of the involved
application. Neither party took testimony or otherwise submitted
any evidence. Both parties filed briefs, although opposer did
not file a reply brief, and an oral hearing was not requested.
It is settled that where an opposer establishes that a
pleaded registration is subsisting and is owned by the opposer,
priority is not in issue with respect thereto. See, e.g., King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974). The issues to be decided herein are thus
whether, in light of applicant's admission with respect to the
registrations pleaded by opposer, priority is in issue and, if
such is not the case, whether applicant's "AMADEUS" mark for its
"health spa services, namely, skin care, body care, and hair care
treatments" so resembles opposer's "AMADEUS" mark for the
services in connection with which such mark is registered as to
be likely to cause confusion, mistake or deception as to the
source or sponsorship of the parties' respective services.
Opposer, in its brief, asserts that it "filed the
opposition based on a claim of proprietary rights in the mark
AMADEUS (hereafter 'Opposer's Mark')," as reproduced below,
has been presented in the parties' briefs. Accordingly, no further
consideration will be given thereto.
Opposition No. 91151180
4
which "is used in connection with 'providing and leasing access
to a worldwide computerized system and data bank in the field of
reservations for lodging, hotels and transportation (air, land
and sea) and providing and leasing access to a worldwide
computerized system and data bank for use by travel agents in
connection with travel services for air, land and sea
transportation reservations and ticketing, car rentals and
tourist packages, organizing trips and excursions, and travelers'
guide services and sight seeing tourism services.' (hereafter
'Opposer's Services')." Opposer further maintains that:
Opposer's Mark is the subject of
Registration No. 1,802,387 on the Principal
Register, which covers Opposer's Services and
was issued November 2, 1993, (hereafter
"Opposer's Registration"). The United States
Patent and Trademark Office ... accepted
opposer's Sections 8 & 15 affidavit on July
30, 1999. Accordingly, Opposer's
Registration is incontestable.
....
The evidence of record consists solely
of Opposer's pleaded registration and the
Application.
By means of ... the Answer, Applicant
admits opposer's ownership of Opposer's
Registration and, therefore, the registration
date thereof as an undisputed fact.
Opposer consequently insists that because applicant "does not
challenge registration of Opposer's Mark or opposer's rights
therein," the question of whether there is a "likelihood of
confusion between Applicant's Mark and Opposer's Mark is the
principal issue in this proceeding."
Opposition No. 91151180
5
Applicant, in response, argues in its brief that while
opposer "purports to have a registration for the mark AMADEUS" as
claimed in its brief,3 such registration "is not properly in
evidence in this proceeding, and should not be considered by the
... Board. The evidence of record therefore consists solely of
the Application." Applicant, in support thereof, respectively
cites Trademark Rules 2.122(d) and 2.122(b)(1), and correctly
notes, in particular, that:
Opposer did not ... take the steps
necessary to make its alleged registration
evidence of record by any of the three proper
methods enumerated ... [in such rule].
Opposer's Notice of Opposition ... did not
include two copies of the alleged
registration showing the current status and
title of the registration. During Opposer's
testimony period, Opposer took no testimony
and therefore did not identify and introduce
its alleged registration through proper
testimony. Finally, during Opposer's
testimony period, Opposer did not file and
serve any Notice of Reliance making its
alleged registration evidence of record.
Moreover, as to opposer's argument that its pleaded registration
"is of record because Applicant's Answer admits Opposer's
ownership" thereof, applicant accurately points out that "[a]n
admission of ownership by an applicant is not, however,
sufficient to make the registration of record." Thus, according
to applicant, opposer has "entirely failed to meet its burden
3 Specifically, in addition to opposer's pleading of ownership of Reg.
No. 1,802,387, applicant accurately observes that the notice of
opposition "cites a second registration," namely, Reg. No. 1,457,753,
which is for the mark "AMADEUS" and, as applicant notes, is "for
'night club services' ... and 'discotheque services'." However, as
applicant also correctly points out, opposer's brief "does not purport
to rely upon this alleged registration," which applicant insists "is
not properly ... of record" for the same reason that opposer's other
pleaded registration is not properly part of the evidentiary record.
Opposition No. 91151180
6
through its failure to prosecute, and its Opposition should be
denied."
We agree with applicant that, contrary to opposer's
assertions, neither of opposer's pleaded registrations is
properly of record herein. Specifically, besides the failure of
opposer to utilize any of the methods provided by Trademark Rule
2.122(d), applicant admits in its answer to the notice of
opposition only that opposer is the owner of registrations
pleaded by opposer therein. The notice of opposition, however,
contains no allegations that opposer's pleaded registrations are
valid and subsisting. Moreover, in its answer applicant has
specifically denied the allegation of the notice of opposition
that such registrations "are prima facie evidence of Opposer's
exclusive right to use Opposer's Trademark in commerce in
connection with the services specified in the registrations,"
thereby putting opposer on notice that its claim of proprietary
rights therein was being challenged. See, e.g., Hewlett-Packard
Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713 (Fed.
Cir. 1991); and TBMP §704.03(b)(1)(A) (2d ed., 1st rev. March
2004).
Accordingly, having failed to make either of its
pleaded registrations properly of record, so that there is no
showing that such registrations are subsisting in addition to
being owned--as applicant admits--by opposer, priority is in
issue herein. Furthermore, because there is thus no showing that
opposer possesses rights in a mark which are equal to or superior
to the earliest date upon which applicant is entitled to rely in
Opposition No. 91151180
7
this proceeding, namely, the May 7, 2001 filing date of its
involved application, priority lies with applicant rather than
opposer. See, e.g., Lone Star Mfg. Co., Inc. v. Bill Beasley,
Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974); Columbia Steel
Tank Co. v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406,
407 (CCPA 1960); and Miss Universe, Inc. v. Drost, 189 USPQ 212,
213 (TTAB 1975). Opposer, therefore, cannot prevail herein even
if a likelihood of confusion were to be shown.
Nonetheless, even if the pleaded registration relied
upon by opposer in its brief had been properly made of record,4
so that priority was not in issue, the opposition must be
dismissed because the pertinent factors set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973), for determining whether a likelihood of confusion exists,
show that opposer has failed to meet its burden of demonstrating
that confusion is likely to occur from the contemporaneous use of
the marks at issue in connection with the parties' respective
services. In particular, as to the two key considerations in any
likelihood of confusion analysis, which as indicated in Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976), are the similarity or dissimilarity in the goods
and/or services at issue and the similarity or dissimilarity of
4 As noted earlier, opposer's brief makes no mention of Reg. No.
1,457,753, which it also pleaded in the notice of opposition.
Instead, opposer relies in its brief solely upon its other pleaded
registration, namely, Reg. No. 1,802,387, in support of its contention
that there is a likelihood of confusion. Accordingly, Reg. No.
1,457,753 will not be given any further consideration.
Opposition No. 91151180
8
the respective marks in their entireties,5 it is the case that in
the absence of a showing of relatedness with respect to the
parties' services, opposer cannot prevail herein even if the
marks at issue are considered to be sufficiently similar.
Turning first to the respective marks, opposer contends
that because applicant's mark is identical to the term "AMADEUS"
in opposer's mark, "the marks look alike, sound alike, as well as
have the same meaning and, therefore, can create the same
commercial impression." Opposer, in fact, goes so far as to
assert that "the applicant's mark is identical to the
registrant's mark ... in this case." While we disagree with such
assertion since it is plain that, as pointed out by applicant,
its "AMADEUS" mark differs from opposer's "AMADEUS" and design
mark in that the latter prominently features "a very specific and
precise graphic logo," it is still the case that, when considered
in their entireties, the marks at issue are substantially similar
in sound, appearance, connotation and commercial impression due
to the shared--and apparently arbitrary--term "AMADEUS."
Consequently, if the marks at issue were to be used in connection
with the same or substantially similar services, confusion as to
the origin or affiliation of such services would be likely to
occur.
Nevertheless, turning to consideration of the
respective services, we concur with applicant that opposer "has
5 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks." 192 USPQ at 29.
Opposition No. 91151180
9
made no showing of any substantial amount of similarity" between
applicant's "health spa services, namely, skin care, body care,
and hair care treatments," and opposer's services, which consist
of:
providing and leasing access to a worldwide
computerized system and data bank in the
field of reservations for lodging, hotels and
transportation (air, land and sea) and
providing and leasing access to a worldwide
computerized system and data bank for use by
travel agents in connection with travel
services for air, land and sea transportation
reservations and ticketing, car rentals and
tourist packages, organizing trips and
excursions, and travelers' guide services and
sight seeing tourism services.
According to opposer, the parties' services are related, and
hence confusion is likely, because:
Services like those opposer's mark
identifies can direct members of the relevant
public and trade to a provider of services of
the type the Application covers. Arguably,
persons seeking lodging and hotels as well as
tourist packages through reservations made by
travel agents utilizing Opposer's Services
are suitable patrons for Applicant's
Services. It is generally known that people
who travel and vacation visit health spas and
seek skin care, body care, and hair care
treatments. Thus, it is not unreasonable to
conclude [that] such persons would believe
Applicant's Services are related to or in
some way part of Opposer's Services simply
because the marks are substantially
identical. Accordingly, there is a viable
relationship between the services here under
consideration.
Applicant, in response, contends that the respective
services have not been shown to be related, arguing that:
Opposer's services are used by travel
agents. Travel agents are sophisticated
users who specialize in this relevant area.
As such, they are capable of discerning
Opposition No. 91151180
10
between marks which may be similar. Further,
Applicant's services are offered to the
general public. Thus, the channels of trade
and relevant purchasers of each parties'
goods and services are not substantially
similar.
Applicant also observes that opposer "has shown no direct
overlap, nor has it suggested that the parties compete with each
other."
It is clear that as identified in the involved
application and pleaded registration, applicant's services on
their face are specifically and distinctly different from
opposer's services. Specifically, as to the services by opposer
of "providing and leasing access to a worldwide computerized
system and data bank for use by travel agents in connection with
travel services for air, land and sea transportation reservations
and ticketing, car rentals and tourist packages, organizing trips
and excursions, and travelers' guide services and sight seeing
tourism services," applicant is correct that such services are
directed to travel agents rather than, as is the case with
applicant's services, to members of the general public. The
former therefore would be offered through different channels of
trade to different classes of customers. Furthermore, while
there is no such limitation in the services by opposer of
"providing and leasing access to a worldwide computerized system
and data bank in the field of reservations for lodging, hotels
and transportation (air, land and sea)," and thus such services
may be regarded as being available to members of the general
public, the fact remains that applicant's "health spa services,
Opposition No. 91151180
11
namely, skin care, body care, and hair care treatments" are
rendered through a different channel of trade.
Consequently, in either of the above circumstances, it
is incumbent upon opposer, as the party having the burden of
proof, to show that the respective services are related in some
viable fashion and/or that they are marketed or promoted under
circumstances and conditions that could bring them to the
attention of the same purchasers or prospective customers in a
situation or circumstances that could cause such consumers
reasonably to assume, because of the identity or substantial
similarity of the parties' marks, that the particular services
share a common origin or sponsorship. See, e.g., Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). Here,
opposer has basically offered only generalizations and
speculative assertions.6 In particular, it has not shown that
the general public would reasonably expect a provider of a
worldwide computerized system and data bank in the field of
reservations for lodging, hotels and transportation to also
provide health spa services or vice versa. Given the absence,
therefore, of any evidence of a viable relationship between the
respective services, opposer has failed to meet its burden of
6 As our principal reviewing court has repeatedly cautioned, "[w]e are
not concerned with mere theoretical possibilities of confusion,
deception, or mistake or with de minimis situations but with the
practicalities of the commercial world, with which the trademark laws
deal." Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting
from Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403,
1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153 USPQ 412 (TTAB 1967).
Opposition No. 91151180
12
proving that confusion is likely to occur from the
contemporaneous use of the marks at issue.
Decision: The opposition is dismissed.