Cococare Products, Inc.v.E.T. Browne Drug Co., Inc.

Trademark Trial and Appeal Board

Jan 5, 2011

No. 91169074 (T.T.A.B. Jan. 5, 2011)

RK Mailed: January 5, 2011

Opposition Nos.91169074 (parent)
91162692
91165288
91167122

Cococare Products, Inc.

v.

E.T. Browne Drug Co., Inc.

Before Kuhlke, Wellington and Wolfson, Administrative
Trademark Judges

By the Board:
These consolidated proceedings now come up for
consideration of opposer’s pending motions for summary
judgment based on an appellate disposition1 of a civil action
between the parties2 pertaining to two of applicant’s
registrations3 not involved in any of the consolidated
proceedings. The motions have been fully briefed.

1 E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 87
USPQ2d 1655 (3d Cir. 2008).

2 E.T. Browne Drug Co., Inc. v. Cococare Products, Inc., Civil Action
No. 03-cv-5442, in the United States District Court for the District of
New Jersey.

3 Registration No. 2459321 (registered June 12, 2001) for PALMER’S
COCOA BUTTER FORMULA for “personal care products, namely, lip balm, body
wash, body oil, moisturizing lotions and creams, skin creams, massage
cream, toilet soap, liquid soap, facial creams, moisturizing breast creams
for nursing mothers, hand creams, suntan oil cream, fade cream, non-
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 Nos. 91169074 (parent), 91162692, 91165288 and 91167122
2
Background
Between 2004 and 2006, opposer Cococare Products, Inc.
(“Cococare”) instituted a series of oppositions against
applications for marks owned by E.T. Browne Drug Co., Inc.
(“Browne”).4 As early as February 2005, the parties sought to

medicated skin ointments, skin nourishing moisturizing fluids” in
International Class 3 and “diaper rash ointment” in International Class 5,
with a claim of acquired distinctiveness as to COCOA BUTTER FORMULA.
Section 8 affidavit accepted.
Registration No. 2464760 (registered June 26, 2001) on the
Supplemental Register for COCOA BUTTER FORMULA for “personal care
products, namely, lip balm, body wash, body oil, moisturizing lotions and
creams, skin creams, massage cream, toilet soap, liquid soap, facial
creams, moisturizing breast creams for nursing mothers, hand creams,
suntan oil cream, fade cream, non-medicated skin ointments, skin
nourishing moisturizing fluids” in International Class 3. Section 8
affidavit accepted.

4 Opposition No. 91162692 (filed October 26, 2004) against application
Serial No. 78328367 (filed November 14, 2003) for COCOA BUTTER FORMULA in
standard characters with a claim of acquired distinctiveness as to the
mark for “personal care products, namely, lip balm, body wash, body oil,
moisturizing lotions and creams, skin creams, massage cream, toilet soap,
liquid soap, facial creams, moisturizing breast creams for nursing
mothers, non-medicated diaper rash cream, hand creams, suntan oil cream,
fade cream, non-medicated skin ointments, skin nourishing moisturizing
fluids, skin firming lotion, and non-medicated scar serum” in
International Class 3 with a date of first use anywhere and in commerce of
1975.
Opposition No. 91165288 (filed May 19, 2005) against application
Serial No. 76400753 (filed April 24, 2002) for COCONUT OIL FORMULA in
typed form with a claim of acquired distinctiveness to the mark as a whole
as well as a disclaimer of COCONUT OIL for “hair shampoo, hair
conditioner” in International Class 3 with a date of first use anywhere
and in commerce of February 6, 1974.
Opposition No. 91167122 (filed October 24, 2005) against application
Serial No. 78428932 (filed June 2, 2004) for PRESSING OIL FORMULA in
standard characters with a claim of acquired distinctiveness to the mark
as a whole as well as a disclaimer of PRESSING OIL for “Hair care
products, namely, conditioners, pomades, hair styling and setting gels,
hair sheen gel, hair moisturizers, hair shaping wax, hair relaxer cream,
hair treatment for dry and breaking hair, hair balm, and hair nourishing
preparations” in International Class 3 with a date of first use anywhere
and in commerce of 1980.
Opposition No. 91169074 (filed February 7, 2006) against application
Serial No. 78428936 (filed June 2, 2004) for BERGAMOT FORMULA in standard
characters with a claim of acquired distinctiveness to the mark as a whole
as well as a disclaimer of BERGAMOT for “Hair care products, namely,
conditioners, pomades, hair styling and setting gels, hair sheen gel, hair
moisturizers, hair shaping wax, hair relaxer cream, hair treatment for dry
and breaking hair, hair balm, and hair nourishing preparations” in
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
3
suspend these proceedings pending disposition of the
aforementioned civil action between the parties. In view
thereof, the Board suspended proceedings. Upon conclusion of
the District Court action (but prior to its appeal), opposer
filed a motion for judgment on the pleadings and,
alternatively, for summary judgment in all four oppositions
based on the District Court’s decision that “cocoa butter
formula” is a generic designation for personal care and
beauty aid products formulated with cocoa butter.5
The District Court’s ruling was appealed to the Third
Circuit and, in view thereof, proceedings before the Board
were again suspended. On February 16, 2007, the Board
consolidated the four proceedings designating Opposition No.
91169074 as the “parent” proceeding and maintained the
suspension pending final disposition of the civil action.
The Third Circuit rendered its decision on August 5,
2008, reversing the District Court’s grant of summary
judgment on the ground of genericness. The Third Circuit
Court also determined that “cocoa butter formula” has not
acquired distinctiveness, and therefore granted summary
judgment to Cococare on the basis that Browne lacks a

International Class 3 with a date of first use anywhere and in commerce of
1981.

5 Since only one of the oppositions concerns the use of “cocoa butter
formula,” opposer sought to extend the applicability of the District
Court’s ruling to the marks in the remaining oppositions by arguing that
the coupling of a product ingredient with the term “formula” results in a
generic term.
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
4
protectable trademark interest in the term. One week later,
Cococare filed a copy of the Third Circuit decision as well
as its second motion for summary judgment as to the mark
COCOA BUTTER FORMULA in Opposition No. 91162692.
Since the Third Circuit remanded the civil action back
to the District Court to address opposer’s request for relief
under Trademark Act § 37, 15 U.S.C. § 1119, the Board
deferred consideration of opposer’s motions until final
disposition by the District Court. That disposition came on
January 20, 2009, and a copy of the Court’s decision was
filed with the Board by opposer on January 28, 2009, along
with opposer’s request to take up consideration of the
deferred motions.
Disposition of Opposition Nos. 91169074, 91165288 and 91167122
As a matter of housekeeping, we first address opposer’s
motion (filed October 5, 2006) for judgment on the
pleadings/summary judgment filed on the basis of the District
Court’s original finding of genericness. As that finding has
been reversed, opposer’s motion is MOOT and will be given no
further consideration. This brings the Board to opposer’s
second motion for summary judgment based on the Third
Circuit’s decision. As it is clear from the motion that the
marks in Opposition Nos. 91169074, 91165288 and 91167122 are
not implicated, proceedings are RESUMED as to these
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
5
proceedings in accordance with the schedule set forth at the
end of this order.
Opposer’s Motion for Summary Judgment in Opposition No.
91162692
Turning then to opposer’s motion and its request for
relief as to Opposition No. 91162692 involving the mark COCOA
BUTTER FORMULA, opposer asserts that the Third Circuit “found
that the very designation whose registrability is in issue in
Opp. No. 91,162,692 – namely, cocoa butter formula – had
failed to acquire secondary meaning despite long use of the
designation” and based on this finding, requests that the
Board “deny registration of[] Serial No. 78,328,367 for cocoa
butter formula on the grounds that the designation lacks
secondary meaning” pursuant to the Third Circuit’s decision.
Opposer’s Submission of Court Decision in Civil Action and
Motion for Summary Judgment in Favor of Opposer (“Opposer’s
Motion”), pp. 1-2.
In response, applicant argues that the Third Circuit did
not make any such determination but instead determined that
applicant “had not submitted sufficient evidence of secondary
meaning with respect to the COCOA BUTTER FORMULA mark to
create an issue of fact.” Applicant’s Opposition to
Opposer’s Motion for Summary Judgment (“Applicant’s
Response”), p. 1 (emphasis in original). Applicant contends
that the Third Circuit had not determined that “secondary
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
6
meaning could never be acquired or shown” and that the Third
Circuit’s decision “clearly leaves open the possibility that
[COCOA BUTTER FORMULA] is capable of acquiring secondary
meaning.” Applicant’s Response, p. 2. Applicant further
submits that it will agree “to an order that it abandon its
application Serial No. 78328367 for COCOA BUTTER FORMULA, and
dismissing the present opposition without prejudice as to
COCOA BUTTER FORMULA.” Id.
In reply, opposer argues that applicant’s contention
that the Third Circuit’s decision leaves open the possibility
that applicant may prove secondary meaning for “cocoa butter
formula” sometime in the future is erroneous in that the
Third Circuit decision “made it a legal impossibility for
Applicant to obtain a Principal Registration for ‘cocoa
butter formula’” and that to dismiss this opposition without
prejudice “would strip the Third Circuit’s decision of any
meaningful impact on the marketplace.” Opposer’s Reply in
Further Support of its Motion for Summary Judgment in Favor
of Opposer (“Opposer’s Reply”), pp. 2-3.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute and the moving party is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(c). The party
moving for summary judgment bears the initial burden of
demonstrating the absence of any genuine issue of material
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
7
fact and that it is entitled to judgment as a matter of law.
See Celotex Corp. v. Catrett, 477 U.S. 317 (1986). A factual
dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of
the non-moving party. See, Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472
(Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
The evidence must be viewed, however, in a light most
favorable to the non-moving party, and all reasonable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra. The
Board may not resolve issues of material fact; it may only
ascertain whether issues of material fact exist. See,
Lloyd’s Food Products, 987 F.2d at 766, 25 USPQ2d at 2029;
Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542.
I. Standing
As a threshold matter, we must first determine if
opposer has standing to bring this opposition against
applicant. In order to have standing, a plaintiff must have
a real interest in the proceeding and a reasonable basis for
its belief of damage. See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999). To the extent that opposer
was a defendant in a civil action between the parties
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
8
involving a designation that applicant seeks to register in
this proceeding, opposer is no mere inter-meddler and,
therefore, has standing. See Domino’s Pizza, Inc. v. Little
Caesar Enterprises, Inc., 7 UPSQ2d 1359 (TTAB 1988).
II. Claim Preclusion and Issue Preclusion
We now reach the question of the prior civil action’s
effect, if any, on the disposition of this proceeding. We
first consider the doctrine of claim preclusion wherein a
final judgment “on the merits” of a claim (i.e., cause of
action) in a proceeding serves to preclude, in a subsequent
proceeding between the parties or their privies, the
relitigation of the same claims that were raised or could
have been raised in the prior action. International
Nutrition Co. v. Horphag Research, Ltd., 220 F.3d 1325, 1328,
55 USPQ2d 1492, 1494 (Fed. Cir. 2000). Thus, a subsequent
suit is barred by claim preclusion if: 1) there is identity
of parties (or their privies); 2) there has been an earlier
final judgment on the merits of a claim; and 3) the second
claim is based on the same set of transactional facts as the
first. Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360,
1362, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
There is no question that the parties in this proceeding
are identical to those in the civil action and that there has
been a final judgment on the merits in the prior proceeding.
The main question here is whether the claim in this
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
9
proceeding is based on the same set of transactional facts as
the claim in the civil action. In that regard, we initially
note that the pleadings in the civil action are not of record
so our consideration of the claim is accordingly limited to
what we can glean from the written decisions of the District
Court and the Third Circuit. With that being said, we do not
find claim preclusion to be applicable to opposer’s claim in
this proceeding as the claims in each proceeding differ.
See, e.g., Domino’s Pizza, Inc. v. Little Caesar Enterprises,
Inc., 7 USPQ2d 1359 (TTAB 1988). Specifically, opposer’s
claim in the civil action, brought by way of counterclaim to
cancel applicant’s Supplemental registration for COCOA BUTTER
FORMULA and to amend applicant’s Principal registration for
PALMER’S COCOA BUTTER FORMULA to disclaim COCOA BUTTER
FORMULA, is based on genericness, whereas opposer’s claim in
this opposition proceeding is based on mere descriptiveness
and no acquired distinctiveness against an application for
registration. As the claims are manifestly distinct, there
can be no claim preclusion based on the prior civil action.
On the other hand, issue preclusion may still be
available in a subsequent proceeding to preclude the
relitigation of issues litigated in a prior proceeding
between the parties (or their privies), notwithstanding the
fact that the claims in the two proceedings may differ. See
Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 1365-66,
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
10
55 USPQ2d 1854, 1858-59 (Fed. Cir. 2000). Issue preclusion
requires: 1) identity of an issue in a prior proceeding; 2)
that the identical issue was actually litigated; 3) that
determination of the issue was necessary to the judgment in
the prior proceeding; and 4) the party defending against
preclusion had a full and fair opportunity to litigate the
issue in the prior proceeding. Id.
In the civil action, the Third Circuit considered the
question of whether COCOA BUTTER FORMULA had acquired
distinctiveness in relation to various personal care
products. Since COCOA BUTTER FORMULA resides on the
Principal Register as part of PALMER’S COCOA BUTTER FORMULA
under a claim of acquired distinctiveness, applicant has
“accept[ed] a lack of distinctiveness [in its mark] as an
established fact.” Yamaha International Corp. v. Hoshino
Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir.
1988). Therefore, the issue the Court necessarily had to
decide was whether COCOA BUTTER FORMULA had acquired
distinctiveness, because “even assuming [COCOA BUTTER
FORMULA] is descriptive, this term must have a secondary
meaning to be protectable.” E.T. Browne Drug Co. v. Cococare
Products, Inc., supra, at 189. There is no question that
this issue was actually litigated as “the parties to the
original action disputed the issue and the trier of fact
resolved it.” Mother’s Restaurant, Inc. v. Mama’s Pizza,
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
11
Inc., 723 F.2d 1566, 1570, 221 USPQ 394, 397 (Fed. Cir.
1983)(quoting Continental Can Co. v. Marshall, 603 F.2d 590,
596 (7th Cir. 1979)). Further, there is nothing to suggest,
and applicant does not claim otherwise, that it did not have
a full and fair opportunity to litigate the issue.
Therefore, the only remaining question as to the preclusive
effect of the civil action is whether there is an identity of
issue.
In this proceeding, applicant seeks to register COCOA
BUTTER FORMULA for various personal care products on the
Principal Register under a claim of acquired distinctiveness.
As in the registration for PALMER’S COCOA BUTTER FORMULA in
the civil action, the claim of acquired distinctiveness of
COCOA BUTTER FORMULA in the mark was based on a statement of
substantially exclusive and continuous use in commerce for at
least the five years immediately before the date of the
statement. Although COCOA BUTTER FORMULA was coupled with
the term PALMER’S in the civil proceeding, that is of no
event as the Third Circuit unequivocally noted that the civil
action “focuses on the term ‘Cocoa Butter Formula,’ not on
the registered trademark ‘Palmer’s Cocoa Butter Formula.’”
E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d
185, 197 (3d Cir. 2008). As we can perceive no material
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
12
distinction6 between the issue litigated in the civil action
and the issue in this proceeding, we find that there is an
identity of issue and that application of issue preclusion is
appropriate.
In view thereof, opposer’s motion for summary judgment
on the basis that applicant’s mark COCOA BUTTER FORMULA is
descriptive and has not acquired distinctiveness is hereby
GRANTED. Judgment is entered against applicant, the
opposition in Opposition No. 91162692 is sustained and
registration as to application Serial No. 78328367 is
refused.7

6 Questions of secondary meaning in the context of an estoppel inquiry
must necessarily consider the passage of time. See Neapco, Inc. v. Dana
Corp., 12 USPQ2d 1746, 1747 (TTAB 1989). Although the issue of whether a
particular designation has acquired secondary meaning is determined on the
basis of facts existing as of the time registrability is being considered
up to the close of testimony in an opposition proceeding, see General
Foods Corp. v. MGD Partners, 224 USPQ 479, 486 (TTAB 1984), applicant has
failed to submit any evidence or otherwise argue that COCOA BUTTER FORMULA
has acquired distinctiveness since the time the issue was considered in
the civil proceeding, so as to distinguish the issues in the two
proceedings.

7 While our decision is with prejudice, as Judge Rich observed, trademark
rights “are like ocean beaches; they shift around. Public behavior may
affect them.” Rich, Trademark Problems As I See Them – Judiciary, 52
Trademark Rep. 1183, 1185 (1962). This is particularly true concerning
questions of secondary meaning. As one court noted, “[t]he issue of
whether res judicata bars relitigating the issue of secondary meaning []
is a difficult one [as there] are no cases which expressly demarcate a
minimum time that must elapse before a defendant can re-litigate the issue
of secondary meaning.” Test Masters Educational Services, Inc. v. Singh,
428 F.3d 559, 76 USPQ2d 1865 (5th Cir. 2005), cert. denied, 126 S. Ct.
1662, 164 L. Ed. 2d 397 (U.S. 2006). Indeed, the Board has previously
observed that “when the circumstances upon which a prior holding was based
may no longer prevail or where significant intervening events may have
occurred, the operation of the doctrine of collateral estoppel may be put
aside in a subsequent proceeding between the same parties.” Haymaker
Sports, Inc. v. Turian, 197 USPQ 32, 39 (TTAB 1977), aff’d on point, rev’d
on other grounds, 581 F.2d 257, 198 USPQ 610 (CCPA 1978).
Opposition Nos. 91169074 (parent), 91162692, 91165288 and 91167122
13
Proceedings are resumed as to the remaining oppositions
and dates are reset in accordance with the schedule below:
Answer Due 2/3/2011

DISCOVERY PERIOD TO CLOSE: 7/2/2011

30-day testimony period for plaintiff to close 9/30/2011

30-day testimony period for defendant to close 11/29/2011

15-day rebuttal period for plaintiff to close: 1/13/2012

* * *