Chantellev.De Millus Comercio e Industria de Roupas S.A.

Trademark Trial and Appeal Board

Jan 14, 2004

No. 91094834 (T.T.A.B. Jan. 14, 2004)

Mailed: 1/14/04
Paper No. 34
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Chantelle
v.
De Millus Comercio e Industria De Roupas S.A.
_____
Opposition No. 91094834
to application Serial No. 73349031
filed on January 15, 1993
_____
John M. Keene and John H. Anderson of Graham, Campaign P.C.
for Chantelle
Stephen L. Baker of Baker & Rannells for De Millus Comercio
e Industria De Roupas S.A.
______
Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Chantelle has opposed the application of De Millus
Comercio e Industria De Roupas S.A. to register DANTELLE as
a trademark for ladies' hosiery.1 As grounds for
1 Application Serial No. 74349031, filed January 15, 1993,
pursuant to Section 44(e) of the Trademark Act, based on a
Brazilian registration.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91094834
2
opposition, opposer has alleged that it is the prior user of
the mark and trade name CHANTELLE in the United States; that
it owns a registration for this mark for brassieres, slips,
panties, girdles and one-piece body briefers; and that
applicant's mark DANTELLE is likely to cause confusion.
In its answer, applicant has admitted that it has not
used its mark in commerce and that it made no use of its
mark in the United States or in commerce regulable by
Congress prior to the filing of its application on January
15, 1993, and denied the remaining allegations in the notice
of opposition.2
The record includes the pleadings, the file of the
opposed application, and the testimony, with exhibits, of
opposer's witness, Sonja Winther, managing director of
Chantelle, Inc, the U.S. subsidiary of opposer.3 Applicant
2 Applicant also asserted as "affirmative defenses" that the
notice of opposition failed to state a claim upon which relief
may be granted, that Chantelle is a common given name and is not
inherently distinctive, and that the marks are not similar.
Opposer moved to strike these "defenses". The Board struck the
defense that Chantelle is not an inherently distinctive mark as
an impermissible collateral attack on opposer's registration.
Noting that applicant was not barred from pleading the remaining
matters as affirmative defenses, even though these defenses may
be similar or even identical to applicant's denials of opposer's
allegations, the Board otherwise denied the motion to strike. We
note that applicant did not subsequently submit any evidence or
argument with respect to the remaining defenses.
3 A portion of Ms. Winther's testimony deposition was submitted
under seal. Although this excerpt does include some confidential
material, the latter portion of the excerpt clearly does not
contain confidential information, and it appears that counsel
simply failed to indicate, during the deposition, when the
confidential part was at an end. Accordingly, in our opinion we
have treated as confidential only that portion of the excerpt
which is truly confidential. Further, during Ms. Winther's
Opposition No. 91094834
3
did not submit any evidence, and only opposer filed a brief.
An oral hearing was not requested.
The record shows that opposer is a French corporation
which started doing business in the United States under the
trade name and trademark CHANTELLE in 1971. Since at least
1999, when opposer's witness joined its U.S. subsidiary, the
mark has been used on bras, panties, girdles, body suits,
garter belts, slip dresses and body briefers. Opposer's
products are considered "high end," and are sold in "luxury"
department stores such as Neiman Marcus, Saks Fifth Avenue,
Nordstrom, Jacobson's and Bergdorf Goodman. Opposer's goods
are also sold through mail order, and in particular, through
Bra Smyth.
Opposer advertises its products nationally in such
magazines "Elle," "InStyle" and "Vogue," and also advertises
in catalogs of department stores such as Neiman Marcus, Saks
Fifth Avenue and Nordstrom. Occasionally opposer does
newspaper advertising, including in "WWD Magazine," a trade
paper. It also has a website, and it distributes its
deposition, opposer's counsel put into evidence material of which
Ms. Winther had no previous knowledge; in effect, opposer's
counsel, by his statements, was attempting to testify himself.
We have considered Exhibit 20, a copy of a consent judgment,
because it is a public record and because there has been no
objection, although opposer's counsel's remarks characterizing
the proceeding have not been considered. We have also considered
Exhibit 18, a package of DANTELLE pantyhose, and Ms. Winther's
testimony as to her assessment of the product. However,
opposer's counsel's remarks as to how and where the product was
obtained have not been considered.
Opposition No. 91094834
4
catalogs to department store buyers. Although opposer does
not do any television commercials, it got some publicity on
a local New York City morning news show in September 2000 in
which opposer's witness talked about trends and four models
exhibited its lingerie products. In addition, opposer has
participated, along with the manufacturers of products
bearing 30-40 other brands, in an intimate apparel fashion
show in New York City on September 9, 2001, which received
media attention. Specifically, clips from this show were
broadcast on a program called New York One on September 10.
The department store and mail order advertisements
which opposer has made of record are primarily for
brassieres, and in some cases also feature panties.
Opposer's own catalogs show its entire collection.
Priority is not in issue because opposer is the owner
of a registration for CHANTELLE for "brassieres, slips,
panties, girdles and one-piece body briefers, a status and
title copy of which it has made of record."4 King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Turning to the issue of likelihood of confusion, our
determination is based on an analysis of all of the
probative facts in evidence that are relevant to the factors
4 Registration No. 1,636,190, issued February 26, 1991; Sections
8 and 15 affidavit accepted; renewed.
Opposition No. 91094834
5
set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 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 marks, although there are
similarities in the ending of each mark, we find that they
are outweighed by the overall differences in appearance and
connotation. In particular, the marks begin with different
letters, and these differences, because they are at the
beginning of the marks, are more likely to be noted by the
consuming public. Moreover, these differences are
emphasized by the manner in which the marks are depicted in
actual use, with the initial letters "C" and "D" shown in
larger size, capital letters. The "h" in CHANTELLE is also
emphasized because, although it is in lower case, it is in
fact larger in height than the capital "C."5 Further, the
5 Opposer has pointed out that the typestyles of the marks are
very similar. However, the marks are shown in a very ordinary
upper and lower case typestyle, similar to a New Times Roman
font, and as a result consumers are not likely to view the
Opposition No. 91094834
6
major similarity in the appearance and pronunciation of the
marks is the ending syllable ELLE; however, opposer's
witness has testified that "the ending 'elle' is the word
for 'she' in French and it is a common ending to any word
that is feminine, so it connotes femininity." Dep, p. 11.
As a result, consumers are not likely to give this
suggestive element much weight, or to regard the fact that
both marks contain this element as indicating that the marks
identify goods coming from a single source. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
As for the connotations of the marks, opposer's witness
has testified that CHANTELLE has no meaning. If anything,
it is somewhat similar to the given name "Chantal." On the
other hand, opposer's witness testified that applicant's
mark, DANTELLE, is likely to be pronounced in the same
manner as the French word for "lace." To that extent, the
connotation of DANTELLE is clearly different from the
connotation of CHANTELLE.6
similar typestyles as indicating that the marks represent a
single source.
6 Opposer makes the argument in its brief that that almost all
of opposer's CHANTELLE products consist at least partly of lace,
and therefore DANTELLE is descriptive of an element of opposer's
goods. It is not clear to us the purpose of this argument.
Opposer is not asserting that DANTELLE is merely descriptive,
since to be merely descriptive under Section 2(e)(1) of the Act,
it would have to be descriptive of applicant's goods, not
opposer's. Nor has opposer asserted mere descriptiveness as a
ground for opposition. Opposer's argument that applicant's mark
has a meaning with respect to opposer's goods serves only to
Opposition No. 91094834
7
As for the pronunciation of the marks, because the
marks are not English words, we cannot say that there is a
correct pronunciation for them. Thus, although it is
possible that they may be pronounced such that they rhyme
with each other, it is equally likely that "Chan" in
CHANTELLE may be pronounced as the "shan" in "shan't" and
DANTELLE may be pronounced, as opposer suggests, as
"dontelle," or vice versa. However, even if we view the
marks as rhyming, the initial sounds of CHANTELLE and
DANTELLE create different pronunciations.
There are also differences in the parties' goods.
Although opposer's witness has stated that pantyhose on the
one hand, and bras, girdles, panties and body briefers on
the other, are all classified as intimate apparel, the mere
fact that a particular term can be used to describe products
does not necessarily make those goods related. See General
Electric Company. V. Graham Magnetics Incorporated, 197 USPQ
690 (TTAB 1977); Harvey Hubbell Incorporated v. Tokyo
Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975). In this case,
there are clear differences between hosiery and the intimate
apparel identified in opposer's registration. The closest
item to applicant's hosiery sold by opposer are garter
belts. It is noted that this item is not covered by
reinforce the connotative differences between the marks, since
opposer contends that its mark has no meaning.
Opposition No. 91094834
8
opposer's registration, and opposer has not submitted
evidence of use of its mark on such goods prior to the
January 15, 1993 filing date of applicant's application.
However, even if we accept that garter belts are within the
natural scope of expansion of opposer's goods, opposer has
not shown that hosiery is also within such a scope of
expansion. There is no evidence of record to prove that
companies which sell brassieres, panties, garter belts and
opposer's other items of intimate apparel also sell
hosiery.7 Opposer's witness specifically testified that she
was unaware of any plans of opposer to sell pantyhose.
We would also point out that hosiery, on one hand, and
brassieres, panties and the like on the other, are not
complementary items in the sense that handbags and shoes, or
sweaters and skirts would be considered complementary. That
is, consumers do not match hosiery and brassieres, panties
7 In its brief, opposer states that it is common knowledge "that
many women wear pantyhose over or under panties or body briefers
in cold or inclement weather," and that "many types of pantyhose
available today have 'panty' tops." pp. 11-12. As a general
rule, the Board does not take judicial notice of this type of
information. Opposer's witness testified extensively about the
intimate-apparel industry, the buying habits of consumers, etc.,
and we see no reason why opposer could not have adduced evidence
relating to how and when consumers would wear pantyhose and
panties or body briefers. In any event, although we accept that
there is an obvious connection between the use of pantyhose and
panties, we cannot conclude on this record that consumers are
likely to assume that both products emanate from the same source,
any more than consumers are likely to assume that pantyhose and
shoes emanate from the same source, even though pantyhose are
worn with and in shoes. As we pointed out above, opposer has
submitted no evidence that hosiery and intimate apparel such as
panties and brassieres are produced by the same companies.
Opposition No. 91094834
9
or garter belts in the same way that they might match these
other items.
Thus, although we do not find that the parties' goods
are entirely unrelated, the degree of relatedness is not so
great that, given the differences in the marks, consumers
are likely to assume that the goods come from the same
source.
In reaching this conclusion, we have also taken into
consideration the other duPont factors on which there is
evidence in the record. In particular, we note that both
parties' goods are of a type which can be sold in the same
channels of trade. Opposer's witness has, in fact,
testified that these products can be found in the same
retail outlets, and even in the same departments in
department stores. Although this factor favors opposer, it
does not outweigh the dissimilarities in the marks and goods
which we have previously discussed.
In terms of the number and nature of similar marks in
use on similar goods, applicant has not submitted any
evidence of such marks. However, opposer has made of record
the use by C & F Enterprises, Inc. of the identical mark,
CHANTELLE, for bedding. Opposer objected to this use in
2000, but was advised by C & F that they did not believe
that confusion would result from their use of the mark.
Opposer's witness was unaware of any further action that
Opposition No. 91094834
10
opposer might have taken. Although we do not regard this
third-party use for bedding as seriously impacting the
strength of opposer's mark, we cannot say that this duPont
factor strongly favors opposer.8
As a further argument regarding the strength of its
mark, opposer has cited Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 936 F.2d 350, 22 USPQ2d 1463 (Fed. Cir.
1992) for the proposition that "marks that are strong and
distinctive enjoy the widest scope of protection that the
courts can give to a trademark." Brief, p. 10. In point of
fact, the Kenner Parker case involved a famous mark. With
respect to the duPont factor of fame, we find that opposer
has failed to prove that its mark is famous. Opposer does
not attempt to assert that its CHANTELLE products are
dominant sellers for these goods in general; rather, opposer
identifies its sales position as being for a niche product,
designer lingerie which is "positioned high-end in the
market." Dep. p. 17. Even in this niche, however, opposer
is not the leader. Rather, it is a company called Wacoal
which is the overall leader and, even in the high-end stores
in which opposer's goods are sold, opposer's products may in
8 In its brief opposer makes reference to two registered marks
"that are colorably similar to CHANTELLE in the U.S. women's
clothing and accessories fields"—CHANTAL THOMASS and CHANTAL.
Brief, p. 13. These third-party registrations are not of record,
and have not been considered.
Opposition No. 91094834
11
some cases be only 20% of Wacoal's volume, while in others
they may have equal volume.
Although opposer has provided its net sales figures
since 1993,9 it has not put these sales in context, and
therefore we cannot determine how they compare with other
leading brands. As indicated above, the only information
opposer has provided shows that its sales are limited, and
this evidence falls far short of proving that CHANTELLE is a
famous mark.
Similarly, the evidence opposer has submitted with
respect to its advertising expenditures and promotional
efforts does not demonstrate that consumers have been so
exposed to the CHANTELLE mark that they would immediately
recognize it. Opposer has submitted its advertising
expenditures under seal, but these figures do not appear to
us to be extremely large and, again, opposer has not
submitted any comparisons with advertising expenditures for
other, famous marks for similar products. Although opposer
has engaged in advertising efforts since at least 1993, they
appear to us to be rather limited, consisting primarily of
print advertisements in a few issues of certain magazines,
and in store catalogs and one mail-order catalog. Some
amount of its advertising expenditures are for its own
9 Opposer has marked its sales figures as "confidential," and
therefore we will not reveal them in this opinion.
Opposition No. 91094834
12
catalogs, which are distributed to department store buyers,
rather than to ultimate customers. Opposer has engaged in
no television advertising, and its television publicity
efforts consisted of one local New York City program, and
some publicity given to a fashion show in which opposer took
part, along with 30 or 40 other brands.10
As for the conditions under which and buyers to whom
sales are made, again we cannot say that this factor favors
opposer. Opposer's witness testified that customers give a
lot of thought to the purchase of lingerie, and particularly
to the purchase of brassieres. She also testified that
pantyhose may be the subject of careful purchasing. "The
higher the price, I think the more time is spent on it...."
Dep. p. 87. In this connection, we note that the package of
DANTELLE pantyhose which is of record shows a suggested
retail price of $11.00 printed on the packaging, although an
adhesive tag bears of price of "5,90," which we assume is
$5.90. Opposer's witness also stated that people who do not
wear pantyhose often will "spend a lot of time looking
around at the different brands and types," although she said
that "if you wear them more often, it's a commodity, and you
10 We note that this fashion show took place two days before the
terrorist attacks in New York and Washington. Whatever
television publicity it may have received on September 9 and 10,
(and opposer identified only a local New York City program on
September 10), there is no evidence that it continued after that
date.
Opposition No. 91094834
13
know what you like and you buy it quickly." Dep. p. 87. We
conclude from this testimony that the parties' goods,
although bought by ordinary consumers, are generally not the
result of an impulse purchase, and that consumers who buy
pantyhose on a regular basis will know the brand that they
prefer and will look for that brand. Thus, we do not find
that this duPont factor favors opposer.
Opposer contends that applicant adopted its mark in bad
faith, based on the alleged similarity of the marks; the
fact that the French pronunciation of applicant's mark is
the same as the French word for lace; and the typestyle of
applicant's mark as it appears on its packaging is the same
as opposer's. We have previously discussed these arguments,
and for the reasons already given in this opinion, decline
to find that applicant's mark was adopted in bad faith.
In conclusion, even if we accept that certain of the
duPont factors favor opposer (in particular, the similarity
in channels of trade, and lack of third-party use of similar
marks for similar goods), we find that the differences in
the marks and the goods preclude a finding of likelihood of
confusion. See Kellogg Co. v. Pack'em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) (dissimilarity of
marks alone may play a dominant role in the likelihood of
confusion determination).
Decision: The opposition is dismissed.