Boucheron Holdingv.Second Wind Consulting, Inc.Download PDFTrademark Trial and Appeal BoardNov 9, 2009No. 91183919 (T.T.A.B. Nov. 9, 2009) Copy Citation jk Mailed: November 9, 2009 Opposition No. 91183919 Boucheron Holding v. Second Wind Consulting, Inc. Before Walters, Zervas and Bergsman, Administrative Trademark Judges. By the Board: Second Wind Consulting, Inc. (“applicant”) seeks to register the stylized mark shown below for a wide variety of personal care, body and beauty products and preparations for cleansing, hygiene and cosmetic purposes in International Class 3.1 Applicant is proceeding pro se in this opposition. Boucheron Holding (“opposer”) filed an opposition thereto, alleging the grounds of deceptiveness and false suggestion of a connection, both under Trademark Act Section 2(a), as well as priority and likelihood of confusion under Trademark Act Section 2(d). Opposer pleaded ownership and prior use of the common law mark shown below for “perfume, UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91183919 2 body lotion, body cream, aftershave, aftershave balm, body shampoo, deodorant stick for personal use, shower gel, eau de-toilette, eau de-cologne, deodorants for personal use, essential oils, oils for cosmetics and toilet purposes, bath soaps, cosmetic soaps, perfumed soaps, hand soaps, cleansing milk for toilet purposes, cosmetics, make-up and make-up removing preparations, cosmetic preparations for skin and hair care purposes, cosmetic preparations for slimming purposes, sun-tanning preparations, cosmetic preparations for baths, beauty masks, hair lotions, cosmetic kits comprised of lipstick, lip gloss, mascara and eye liner, cosmetic creams, incense, joss sticks, aftershave lotions, shaving preparations, nail varnish and shampoos,” in International Class 3.2 In its answer, applicant denied the salient allegations in the notice of opposition. This proceeding is before the Board for consideration of 1) applicant’s motion (filed September 1, 2009) for leave to amend its answer; and 2) opposer’s and applicant’s cross- 1 Application Serial No. 77254137, filed August 13, 2007, alleging a bona fide intent to use the mark in commerce pursuant to Trademark Act Section 1(b). 2 Opposer also claims Trademark Application Serial No. 77420327, filed March 12, 2008, based on Trademark Act Sections 1(a) and 44(e), and alleging a date of first use of January 1, 1994, and date of first use in commerce of January 5, 2005. However, this later-filed application may not be the basis for opposer’s claim of priority and likelihood of confusion. Thus, the opposition on this basis is limited to opposer’s claim of a previously used common law mark. Opposition No. 91183919 3 motions (filed June 22, 2009 and July 27, 2009, respectively) for summary judgment. The motions have been fully briefed.3 Motion for leave to amend answer Amendments to pleadings in inter partes proceedings before the Board are governed by Fed. R. Civ. P. 15, made applicable to Board proceedings by operation of Trademark Rule 2.116(a). Trademark Rule 2.107. After a responsive pleading has been filed, a party may amend its pleading only by written consent of every adverse party, or by leave of the Board. Leave shall be freely given when justice so requires. See Fed. R. Civ P. 15(a). The Board liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. See TBMP § 507.01 (2d ed. rev. 2004). See also Hurley International LLC v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007). The timing of a motion for leave to amend under Fed. R. Civ. P. 15(a) is a factor in determining whether the adverse party would be prejudiced by allowance of the proposed amendment. The motion should be filed as soon as any ground for such amendment becomes apparent. See Commodore 3 Applicant’s brief in response to opposer’s motion for summary judgment exceeds the page limit set forth in Trademark Rule 2.127(a). Furthermore, opposer objected to applicant’s brief on this basis. Accordingly, we have not considered the brief. See Saint-Gobain Corp. v. Minnesota Mining and Mfg., Co., 66 USPQ2d 1220 (TTAB 2003). Nevertheless, we have still reached the merits of opposer’s motion based on the evidence submitted. Opposition No. 91183919 4 Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). Where the moving party seeks to add a new claim or defense, and the proposed pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally will deny the motion for leave to amend. See Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1785 (Fed. Cir. 1990). By its motion, applicant seeks leave to add “a new defense of fraud,” “a new defense of abandonment,” “a new defense that the Opposer’s mark is an unregistrable primary (sic) geographically deceptive (sic) misdescriptive mark,” and “a new defense, in that the Opposer does not sell JAIPUR (attributed to the specimen) submitted with the application in United States.” To the extent that applicant was dissatisfied with any discovery responses it obtained, applicant never sought Board intervention by way of, for example, a motion to compel discovery under Trademark Rule 2.120(e), or took other appropriate action designed to address discovery issues. Turning to the timing of the motion to amend, we note that applicant filed its motion to amend after opposer filed its summary judgment motion, after applicant filed its cross-motion for summary judgment, and after opposer’s testimony period commenced. Applicant did not seek to amend Opposition No. 91183919 5 its answer until over four months after discovery closed. Thus, applicant’s motion is untimely. Further, at this late date in the proceeding, allowing an amended answer raising new defenses would significantly delay this proceeding and would prejudice opposer. In view of these circumstances, applicant’s motion for leave to file an amended answer is denied. Therefore, we do not address the viability of applicant’s proposed “defenses.” The answer filed on June 16, 2008 remains applicant’s operative answer. Motions for summary judgment A party is entitled to summary judgment when it has demonstrated that there are no genuine issues as to any material facts, and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). The evidence must be viewed in a light favorable to the nonmoving party, and all justifiable inferences are to be drawn in the nonmovant’s favor. Opryland USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). A party seeking summary judgment bears the initial burden of demonstrating the absence of any genuine issue of material fact, and its entitlement to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986). When the moving party’s motion is supported by evidence sufficient, if unopposed, to indicate that there is no genuine issue of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to Opposition No. 91183919 6 demonstrate the existence of issues of material fact which must be resolved at trial. The nonmoving party may not rest on mere denials or conclusory assertions, but rather must proffer countering evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that there is a genuine factual dispute for trial. See Fed. R. Civ. P. 56(e); Wright, Miller & Kane, 10B Fed. Prac. & Pro. Civ. 3d § 2739 (2007). Applicant’s cross-motion for summary judgment In its motion, applicant states that it seeks judgment on its assertion that “[O]pposer and their (sic) Attorneys knowingly and willfully committed fraud and application fraud (sic) from the original application date to the present.” Applicant’s motion seeks judgment on a defense it later sought to add by way of an amended answer. However, we have denied applicant’s motion to amend, and the proposed amended answer has not been accepted. Thus, applicant may not obtain summary judgment on an unasserted defense. Fed. R. Civ. P. 56(a) and 56(b). See also Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994), and cases cited therein. The Board has long recognized that summary judgment is not appropriate on an unpleaded issue. See TBMP § 528.07(a) (2d ed. rev. 2004).4 In view thereof, applicant’s cross-motion for summary judgment is denied. 4 We note that, in any event, any action taken by opposer in connection with its pending application is irrelevant to this proceeding, as opposer’s Section 2(d) claim is based on its common law use of its mark. Opposition No. 91183919 7 Opposer’s motion for summary judgment In ex parte examination, opposer’s pleaded application has been suspended pending resolution of the registrability of applicant’s mark. In view thereof, opposer has a reasonable belief that it will be damaged by the registration of applicant’s mark, and thus has standing to raise its claims in this proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Opposer’s summary judgment motion is grounded in its claim of priority based on its common law rights and a likelihood of confusion. Opposer does not seek summary judgment on its Section 2(a) claims. With regard to priority, opposer asserts that it has used its mark “since long before filing its pending JAIPUR Application,” and specifically, that it has used its mark “in the United States since 1994.” In support of its claim, opposer submits, inter alia, 1) the declaration of Diego Balo, Vice President of Finance (USA) for YSL Beaute, Inc., a distributor of opposer’s products in the U.S. under license, attesting that opposer has distributed fragrances in the U.S. “since at least 1994;” and 2) opposer’s verified responses and objections to Applicant’s Revised First Set of Interrogatories, wherein opposer stated, in response to Interrogatory No. 6, that Opposition No. 91183919 8 “the goods under the JAIPUR mark were first sold in January 1994.” In his declaration, Mr. Balo attests that opposer’s fragrance line of the JAIPUR brand has consistently ranked high among all men’s fragrances based on sales, and in support thereof relies on the Balo declaration.5 Paragraph 9 of the declaration identifies the marketplace for opposer’s “JAIPUR Homme” fragrance line, based on sales among all men’s fragrances from 2005 to the first quarter of 2009, and indicates that opposer made sales of such products in each year from 2005 through early 2009. In the declaration, Mr. Balo also states that he prepared certain exhibits to opposer’s summary judgment motion, namely, sales reports of gross sales of JAIPUR brand products in the United States by store for 2005 through March 2009, and sales reports of gross sales of JAIPUR brand products “with product detail,” in the United States by store for 2005 through March 2009. These materials, Exhibits H and I to opposer’s motion, have been designated as confidential. Exhibit H is a twenty-page business record showing gross sales, by specific retail establishments, of opposer’s various JAIPUR women’s perfumes for 2005 through a portion of 2009.6 5 Inasmuch as opposer designated as confidential portions of said declaration, as well as certain exhibits referenced therein, we refer to the relevant matters in general terms. 6 Much of Exhibit I is illegible, and, to the extent it is illegible, Exhibit I has not been considered in reaching our decision herein. Opposition No. 91183919 9 Also in the declaration, Mr. Balo attests to his personal knowledge of Exhibits P and Q to opposer’s summary judgment motion, and states that such exhibits are kept by YSL Beaute, Inc. in the ordinary course of business. The exhibits have been designated as confidential. Exhibit P, entitled “Retail Sales History,” provides retail sales for opposer’s products sold under the JAIPUR mark, by store name, or store name and location, for the years 1997, 1998, 1999 and 2000. Exhibit Q consists of opposer’s “Set Sell- In/Sell-Through” data sheets, one covering 2002, 2003 and 2004 through July, and another covering 2004, 2005, and 2006 through June. At footnote 4 to its brief, opposer explains that “Sell-In Data represents shipments of JAIPUR brand products to stores,” and “Sell-Through Data represents JAIPUR brand products sold to the consumer.” In its responses to applicant’s Revised First Set of Interrogatories, Interrogatory No. 5, opposer identified the JAIPUR products it currently distributes or sells in the United States as “eau de parfum, eau de parfum refill, eau de parfum refillable spray, eau de toilette spray, eau de toilette spray (sic), aftershave lotion, aftershave balm, deodorant stick, shower gel, and shampoo,” and stated in response to Interrogatory No. 6 that these listed products “were first sold in January 1994.” In addition to relying on this evidence, opposer asserts that applicant “is not using its JAIPUR proposed mark in commerce or otherwise,” and submits in support Opposition No. 91183919 10 thereof, inter alia, applicant’s responses to opposer’s Requests for Admissions Nos. 8 and 9, which read as follows: 8. Admit that applicant did not use Applicant’s Mark before August 8, 2007. ANSWER: ADMITTED. 9. Admit that Applicant does not currently use Applicant’s Mark on any product offered for sale. ANSWER: ADMITTED. This evidence establishes opposer’s use of its mark in connection with personal fragrance products, aftershave lotion, aftershave balm, deodorant stick, shower gel, and shampoo since at least prior to the filing date of the opposed application, which is the earliest date upon which applicant may rely in this case. In its response to opposer’s motion, applicant has not put forth evidence that raises a genuine issue with respect to opposer’s established common law use of its mark. Therefore, on this record, opposer has demonstrated that there is no genuine issue of material fact with respect to its priority of use of its mark in connection with personal fragrance products, aftershave lotion, aftershave balm, deodorant stick, shower gel, and shampoo. Turning to the likelihood of confusion analysis under Trademark Act Section 2(d), this determination is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d Opposition No. 91183919 11 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). With respect to the similarity of the marks, we look to the marks in their entireties as to appearance, sound, connotation and commercial impression. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their overall commercial impressions that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the perception and recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. See Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant has admitted the following requests for admissions propounded by opposer: 11. Admit that Applicant’s Mark consists of the term “JAIPUR.” 12. Admit that Opposer’s Mark consists of the term “JAIPUR.” Opposition No. 91183919 12 13. Admit that Applicant’s Mark is identical in sight and sound to Opposer’s Mark. A visual difference between the parties’ marks consists of the transposition of the umlaut from the I (in opposer’s mark), to the U (in applicant’s mark), an insignificant distinction. While applicant’s mark is stylized, the stylization is very minimal. Moreover, opposer has not claimed any stylization or particular font in connection with the use of its mark. In view of this, as well as applicant’s admission noted herein, the visual differences between the marks are insignificant, and there is no genuine issue of material fact that the marks are substantially similar. Turning to the similarity of the goods, where, as here, opposer is relying upon common law use of its mark, consideration of the question of likelihood of confusion must be confined to the specific goods on which the mark has been used, as well as the specific trade channels and actual purchasers or potential purchasers, as disclosed by the evidence, without the benefit of those presumptions ordinarily allowed a registration under Trademark Act Section 7(b). See Asplundh Tree Expert Company v. Defibrator Fiberboard Aktiebolag, 208 USPQ 954, 959 (TTAB 1980). Opposer has established prior use of its mark in connection with personal fragrance products, aftershave lotion, aftershave balm, deodorant stick, shower gel, and Opposition No. 91183919 13 shampoo. Applicant’s identified goods include the following: body spray used as a personal deodorant and as fragrance, perfumed creams, perfumed powders, perfumed talcum powder, aftershave lotions, aftershave balms, deodorant for personal use, shower and bath gel, and hair shampoo. Applicant’s recitation includes, and opposer uses its mark on, the following identical goods: aftershave lotion and balm, shower gel and shampoo. There is also no question that applicant’s “body spray used as a fragrance” is encompassed by opposer’s “personal fragrance products.” The fact that some of the products listed in the application are identical to some of opposer’s products is sufficient to support a finding that there is a likelihood of confusion. Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any items that come within the identification of goods in the application). Applicant fails to present arguments or evidence indicating that there is a genuine issue of fact with respect to the identical nature of the noted goods. For example, applicant argues that any proximity between the parties’ goods is “substantially outweighed by other factors,” including that opposer’s goods are “not sold or readily available in the United States;” and that an informal email survey of what appear to be customer service representatives of various retail establishments, regarding Opposition No. 91183919 14 whether they sell a specific “Jaipur by Boucheron” fragrance, demonstrates the lack of availability of opposer’s products in the United States. These arguments pertain to applicant’s unpleaded “defenses” of abandonment and non-use and are not relevant to our likelihood of confusion analysis. Moreover, we have found that there are no genuine issues of material fact with respect to opposer’s use and priority. Turning to the channels of trade and class of purchasers, the evidence of opposer’s common law use of its mark clearly establishes that opposer sells its products to consumers through various listed retail establishments. There is no question that this is a normal trade channel and class of purchaser for these types of goods. Applicant’s argument that its products “are ethnic friendly, of majority natural ingredients (sic),” while opposer “does not make ethnic friendly products,” is unpersuasive. As we found herein, several of the parties’ products are identical, and applicant’s application includes no limitation with respect to channels of trade or classes of purchasers. Thus, it is presumed that the application encompasses all goods of the type identified, that they move in all normal channels of trade, and that they are available to all potential customers. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The one trade channel, i.e., retail establishments, and purchaser, i.e., the general consumer, established in connection with opposer’s use of its mark on its goods is, Opposition No. 91183919 15 therefore, encompassed by the possibly broader trade channels and purchasers of applicant’s identical goods. In other words, there is no genuine issue of material fact that the trade channels and purchasers of these identical goods are the same or, at least, overlapping. Based on the totality of the evidence, we find that the record on summary judgment supports the conclusion that there remain no genuine issues that opposer has prior use of its mark in connection with goods that are identical to goods listed in the application, as noted herein; that the marks are substantially similar; and that at least some of the trade channels and classes of purchasers of the parties’ identical goods are the same. Opposer has met its burden of demonstrating, on motion for summary judgment, that there is no genuine issue with respect to its priority of use, and with respect to the likelihood of confusion as to the source of the parties’ goods under Trademark Act Section 2(d). In view thereof, opposer’s motion for summary judgment is granted. The opposition is sustained on the ground of priority and likelihood of confusion, and registration to applicant is refused. However, opposer has also asserted grounds of opposition under Section 2(a) of the Trademark Act. Opposer is allowed twenty (20) days from the mailing date of this order in which to file a paper with the Board indicating that it wishes to go forward in this proceeding with respect to its grounds for Opposition No. 91183919 16 opposition based on Trademark Act Section 2(a), failing which the Section 2(a) claims will be dismissed. Copy with citationCopy as parenthetical citation