Clairol Inc. et al.v.Lavar Hair Designs LLC

Trademark Trial and Appeal Board

Mar 25, 2004

No. 91124310 (T.T.A.B. Mar. 25, 2004)

Paper No. 20
TJQ
Mailed:3/25/04
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Clairol Incorporated and Proctor and Gamble Hair Care LLC,
joined as party plaintiff
v.
Lavar Hair Designs LLC
_____
Opposition No. 91124310
to application Serial No. 76134717
filed on September 25, 2000
_____
Lynda E. Roesch and J. Michael Hurst of Dinsmore & Shohl for
Clairol Incorporated and Proctor and Gamble Hair Care LLC.
Angelo Notaro of Notaro & Michalos for Lavar Hair Designs
LLC.
______
Before Hanak, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Lavar Hair Designs LLC to
register the mark L-TRESS for “shampoo and hair
conditioners” (in International Class 3) and “hair
extension[s]” (in International Class 26).1
Clairol Incorporated, Proctor and Gamble Hair Care
1 Application Serial No. 76134717, filed September 25, 2000,
alleging a bona fide intention to use the mark in commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91124310
2
LLC’s predecessor, opposed registration under Section 2(d)
of the Trademark Act on the ground that applicant’s mark, if
applied to applicant’s goods, would so resemble opposer’s
previously used and registered mark ULTRESS for “hair
tinting, dyeing and coloring preparations”2 as to be likely
to cause confusion.
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; and trial testimony, with related
exhibits, taken by opposer. Applicant neither took
testimony nor introduced any other evidence. Opposer filed
a brief on the case, but applicant did not. An oral hearing
was not requested.
Melissa Lush, brand manager of opposer’s ULTRESS line
of hair products, testified that the brand was launched in
1985. Ms. Lush stated that ULTRESS is a premium at-home
permanent hair coloring product. The product is sold
through food and drug stores, and mass merchandisers; these
retail outlets include Wal-Mart, Wegman’s, Target, CVS and
Walgreens. In the last two years, products have also been
sold on the internet. Figures for the period 1992-2001 show
sales in excess of $500 million, and the market share of
2 Registration No. 1,282,034, issued June 19, 1984; combined
Sections 8 and 15 affidavit filed.
Opposition No. 91124310
3
ULTRESS products is more than 6%. In 2001, advertising
expenditures for ULTRESS products was around $5 million.
Advertising has appeared on television (during programs such
as Oprah, ER and Friends), in printed publications (such as
Cosmopolitan, Glamour and Allure), and in newspaper inserts
and trade magazines. Celebrities such as Linda Evans and
Jerry Hall have appeared in the advertising. The products
sold under the mark ULTRESS have garnered awards, and have
been the subjects of unsolicited articles in printed
publications. Studies have shown that the brand awareness
of ULTRESS is high, ranging 60%-76% (which represents over
39 million women).
Because opposer has made of record a certified copy
showing status and title of its pleaded registration, and
because its likelihood of confusion claim is not without
merit, we find that opposer has established its standing to
oppose registration of applicant’s mark.3 See: Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). Further, because opposer has made
its pleaded registration of record, priority is not an issue
in this case with respect to the mark and goods identified
3 The certified copy indicates that the registration is owned by
Procter and Gamble Hair Care LLC. Vanessa Nichols, trademark
counsel for Procter and Gamble Company’s beauty care trademark
portfolio, testified that it is her understanding that assignment
documents have been filed to have the registration assigned to
Procter and Gamble Company.
Opposition No. 91124310
4
therein. See: King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Accordingly, the only issue to be decided is whether opposer
has established that a likelihood of confusion exists.
Our determination under Section 2(d) is based on an
analysis of all of the 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 the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Insofar as the marks are concerned, 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 terms of overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
Further, the focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In the present case, the marks ULTRESS and L-TRESS are
nearly identical in terms of sound; there is very little
Opposition No. 91124310
5
difference between the “UL” sound and the “L” sound in the
respective two syllable marks. Any very slight difference
in the sounds of the first part of the marks undoubtedly
would be missed when the marks are spoken.
The marks are also similar in appearance. Both marks
include the letter “L” followed by “TRESS.” The only
differences are the letter “U” in registrant’s mark and the
hyphen in applicant’s mark. When comparing the marks, we
find that the similarities in appearance outweigh the
differences.
We also find that the marks are similar in meaning. We
take judicial notice of the meaning of the term “tress”
which is defined as “a long lock of hair, esp. the long
unbound hair of a woman.” Webster’s Third New International
Dictionary (unabridged ed. 1993). Both marks suggest that
the products are used with tresses.
In sum, the marks are similar in sound, appearance,
meaning and overall commercial impression.
With respect to the goods, it is well established that
the goods of the parties need not be similar or competitive,
or even that they move in the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
Opposition No. 91124310
6
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same source. See In re International
Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
The issue is not whether purchasers would confuse the goods,
but rather whether there is a likelihood of confusion as to
the source of the goods. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
Applicant’s and registrant’s goods are commercially
related hair products. See: La Maur, Inc. v. Alberto
Culver Co., 179 USPQ 607 (D. Minn. 1973), aff’d, 496 F.2d
618, 182 USPQ 10 (8th Cir. 1974) [hair bleach is so related
to hair spray, shampoo, cream rinse, conditioner and setting
solutions that it is reasonable to conclude that they come
from the same source if they bear similar marks]. The
products would be sold in the same channels of trade; Ms.
Lush even testified that applicant’s and registrant’s types
of goods are sold in the same aisles of the same stores.
Further, the products would be sold to the same classes of
purchasers, namely ordinary consumers.
Hair care products of the types involved herein are
relatively inexpensive and, therefore, would be the subjects
of impulse purchase. This factor also favors the finding of
likelihood of confusion.
Opposition No. 91124310
7
The other du Pont factor mentioned by opposer is fame.
Although opposer states that its mark is “famous,” we find
that the record falls short of establishing this. Clearly,
the ULTRESS product line has been very successful and is a
well known brand, but the facts do not establish fame as
that legal term is contemplated.
We conclude that consumers familiar with opposer’s hair
tinting, dyeing and coloring preparations sold under
opposer’s mark ULTRESS would be likely to believe, upon
encountering applicant’s mark L-TRESS for shampoo, hair
conditioners and hair extensions, that the goods originated
with or are somehow associated with or sponsored by the same
entity.
Decision: The opposition is sustained, and
registration to applicant is refused.