Boucheron Holdingv.Second Wind Consulting, Inc.

Trademark Trial and Appeal Board

Nov 9, 2009

No. 91183919 (T.T.A.B. Nov. 9, 2009)

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

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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

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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

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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

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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

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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

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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

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“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

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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

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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

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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

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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

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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

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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

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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

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opposition based on Trademark Act Section 2(a), failing which
the Section 2(a) claims will be dismissed.