Consolidated Artists BVv.Camille Beckman Corporation

Trademark Trial and Appeal Board

Feb 16, 2012

No. 91188863 (T.T.A.B. Feb. 16, 2012)

Mailed: February 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Consolidated Artists BV
v.
Camille Beckman Corporation
_____

Opposition No. 91188863
to application Serial No. 77479412
filed on May 20, 2008
_____

Michael W. Garvey and Una L. Lauricia of Pearne & Gordon LLP
for Consolidated Artists BV.

Albert P. Barker of Barker Rosholt & Simpson LLP for Camille
Beckman Corporation.
______

Before Holtzman, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Camille Beckman Corporation, seeks
registration of the mark MANGO BEACH in standard characters
for goods identified in the application as “hand creams,
body creams, face complexion creams and toners, massage
oils, bubble baths, body cleansing gels, bath powders, soap,
bath beads, skin moisturizing creams, sachets, body splash,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91188863
2
light cologne and perfumes, room fragrances, and lip balms”
in International Class 3.1
Opposer, Consolidated Artists BV, opposed registration
of applicant’s mark on the ground that, as used in
connection with applicant’s goods, the mark so resembles
opposer’s registered mark for “body soaps,
perfumery, essential oils for personal use, cosmetics, hair
lotions, and dentifrices,” as to be likely to cause
confusion, to cause mistake, or to deceive under Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
By its answer applicant denied the salient allegations.
EVIDENCE OF RECORD
The evidence of record consists of: (1) the pleadings;
(2) the file of the opposed application; (3) opposer’s
notice of reliance on applicant’s responses to opposer’s
first set of interrogatories;2 (4) applicant’s notice of

1 Serial No. 77479412, filed May 20, 2008. The application is
based on an allegation of first use and use in commerce on
January 1, 2005 under Section 1(a) of the Trademark Act, 15
U.S.C. §1151(a).

2 The responsive documents to the request for production of
documents are not properly of record and have not been
considered. Trademark Rule 2.120(j)(3)(ii); TBMP §704 (2d ed.
rev. 2004). In addition, opposer’s notice indicated it was
relying on several of its registrations that contain the term
MANGO; however, no registrations were attached to the notice of
reliance. Thus, the only registration of record owned by opposer
is the Trademark Electronic Search System (TESS) printout of the
pleaded registration introduced as an exhibit to applicant’s
discovery deposition of opposer’s in-house counsel, Jaume
Passarell.

Opposition No. 91188863
3
reliance on the discovery deposition, with exhibits, of
Jaume Passarell, opposer’s in-house counsel,3 and TESS
printouts of third-party registrations; (5) applicant’s
testimony depositions, with exhibits, of Foad Roghani, one
of applicant’s partners, and Susan Roghani, applicant’s
founder and owner.
PRIORITY/STANDING
Because opposer’s pleaded registration is of record, is
valid and subsisting, and owned by opposer, opposer’s
standing to oppose registration of applicant’s mark is
established and its priority is not in issue. See King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Accordingly, we turn to the issue of likelihood of
confusion under Section 2(d).
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) 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 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

3 When a discovery response or discovery deposition has been made
of record by one party in accordance with Trademark Rule
2.120(j), it may be referred to by any party for any purpose
permitted by the Federal Rules of Evidence. Trademark Rule
2.120(j)(7).
Opposition No. 91188863
4
Opposer’s pleaded registration is for the mark MANGO in
stylized form for the following goods:
Bleaching preparations and other substances for
laundry use, namely, laundry starch, laundry
detergent, laundry soap; general purpose cleaning,
polishing, grease removing and abrasive liquids,
ponders and pastes; body soaps; perfumery;
essential oils for personal use, cosmetics, hair
lotions; dentifrices, in International Class 3;

Optical apparatus and instruments, namely,
spectacles, eyeglasses, sunglasses, [etc.], in
International Class 9;

Precious metals and their alloys; goods made of or
coated with precious metals and their alloys,
namely, badges decorative boxes, jewelry boxes,
jewelry, [etc.], in International Class 14;

Leather and imitation leather sold in bulk, goods
made of leather and imitation leather, namely,
handbags, [etc.], in International Class 18;

Clothing for men, women and children, namely,
anoraks, bathing suits, bathrobes, beachwear,
belts, blazers, blouses, [etc.], in International
Class 25.4

We begin with our consideration of the similarities
between opposer’s and applicant’s goods, channels of trade
and classes of purchasers. We must make our determinations
under these factors based on the goods as they are recited
in the application and registration, respectively. See
Octocom Systems Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The

4 Registration No. 3436144, filed on May 19, 2004, issued on May
27, 2008. Opposer’s pleading references only the International
Class 3 goods in the registration and opposer focuses its
argument on the goods in International Class 3.

Opposition No. 91188863
5
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.”); and In re Elbaum, 211 USPQ 636
(TTAB 1981).
Although the pleaded registration has a variety of
goods, we focus our consideration of the du Pont factors on
the most closely related goods, specifically those in
International Class 3. The massage oils, body cleansing
gels, soap, light cologne and perfumes listed in the
application are identical to or encompassed by the body
soaps, perfumery, and essential oils for personal use listed
in the pleaded registration. In view thereof, we find the
goods to be identical in part. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981) (it is sufficient for a determination of likelihood of
confusion if the relatedness is established for any item
encompassed by the identification of goods in the
application). Further, inasmuch as the identifications of
goods are identical in part and given the lack of
restrictions in the identifications of goods, we must
presume for purposes of the likelihood of confusion
Opposition No. 91188863
6
analysis, that the trade channels and classes of purchasers
overlap. Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) and Octocom, 16
USPQ2d at 1783. Similarly, these goods would be offered to
the same classes of consumers.
Applicant’s arguments, centered on the differences
between the actual channels of trade for the parties’
respective goods, ignore well established case law requiring
that the comparison of the goods must be based on how the
goods are identified in the involved application and
opposer’s registration.
Applicant argues that opposer’s “customers and target
market are careful, sophisticated purchasers that know the
brand ... [thus t]he conditions of sale and the different
level of sophistication of the shoppers render this factor
in favor of [applicant].” Br. p. 17. We reiterate that the
identifications have no such restrictions and we must
consider the lowest level of sophistication for these goods.
Therefore, the overlap in class of customers for the goods,
as identified, includes the least sophisticated purchaser of
soaps and fragrances.
We turn then to consider the du Pont factor of the
similarity of the marks. Opposer’s basic position is that
applicant’s mark “includes the MANGO mark in its entirety”
and, as such, is similar in “spelling sound and form.” Br.
Opposition No. 91188863
7
p. 12. Opposer asserts that its mark “has become a well-
known and famous mark” and the BEACH portion of applicant’s
mark is descriptive because it was picked by applicant to
“designate a coconut smell.”5 Id. Having asserted that its
MANGO mark is “famous” and that the shared element MANGO is
the dominant part of applicant’s mark, opposer concludes
that the marks are similar.
Because fame plays a dominant role in the likelihood of
confusion analysis, we first address opposer’s assertion
that its mark is famous. Kenner Parker Toys Inc. v. Rose
Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). See also Recot Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). “[T]he fame of
a mark may be measured indirectly, among other things, by
the volume of sales and advertising expenditures of the
goods traveling under the mark, and by the length of time
those indicia of commercial awareness have been evident.”
Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002).
The record here does not support a finding of fame.
Opposer relies on the discovery deposition of its in-house

5 The reference in opposer’s brief to USPTO records with the word
BEACH has not been considered. Factual statements made in a
party’s brief on the case can be given no consideration unless
they are supported by evidence properly introduced at trial.
Jansen Enterprises, Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB
2007) (party’s reference in the brief to third-party
registrations does not make them of record).
Opposition No. 91188863
8
counsel, Mr. Passarell, taken by applicant. Specifically,
opposer asserts that it has “advertised its MANGO Marks on
buses, billboards, radio, in magazines, brochures, catalogs,
and press releases throughout the entire US.” Br. p. 15.
Mr. Passarell testifies as follows:
Q. What kind of advertising and marketing do you
do for the “mango” mark in the United States?

A. We do outdoor, we do buses, press releases,
and catalogs, brochures, radio, billboards, and –
I don’t know. ... I think that’s everything yes.

Passarell Dep. p. 42.

There is no testimony as to how long it has been
advertising in the United States, how often, or the way the
mark appears on the advertising. There is nothing upon
which we may understand the extent to which consumers have
been exposed to this mark or for which goods, e.g.,
clothing, accessories, perfume, etc. There is not one
example in the record of how the mark is used in opposer’s
advertising, other than an excerpt from its website
submitted by applicant as an exhibit to Mr. Passarell’s
deposition. Opposer asserts that there are eleven MANGO
retail stores in the United States located in “prime
locations.” However, we do not know where these stores are
located or how the mark is used, so again, we have no
information as to the extent of consumer exposure to the
mark. Opposer also asserts that “MANGO products are sold in
multi-brand stores, such as perfume shops and in JCPenney
Opposition No. 91188863
9
department stores.” The testimony on this point is as
follows:
A. ... I mean, we sell also perfumes in other
multi-brand stores which are specially dedicated
to perfumery.

Q. How is that – can you give me an example of a
multi-brand store that sells perfumes where you
also sell?

A. As an example – a name of a store, for
example, selling this kind of perfumes?

Q. Sure.

A. I don’t know. There are different retailers
which are especially dedicated only to perfumes,
and then between all the brands there is also
available our Mango perfume.

Q. What’s the scent of your Mango perfume? Is it
a mango scent?

A. No.

Q. Would you describe the scent for me?

A. No. I’m sorry. I cannot describe it.

Q. Okay. Do you know, is there a breakdown
between how much – the percentage of the perfumes
you sell in your store and how much you sell
through independent retailers?

A. I do not have that information. ...

Q. There was an announcement that I pulled off of
the website of the company that says – that
announces an agreement with JCPenney?

A. Yes.

Q. Okay. Can you explain to me the company’s
reasoning for entering into an agreement with
JCPenney?

Opposition No. 91188863
10
A. I don’t know the reasoning. I know that we
have reached an agreement with JCPenney, but I
don’t know what was the reasoning.

Passarell Dep. pp. 18-20.

There is no information as to how many other stores
sell MANGO branded products, where they are, for how long,
or how the mark is displayed. There is no information as to
the offering for sale or actual sales of MANGO products in
JCPenney, simply an agreement to do so. Opposer states that
the sales of MANGO products have been “about 150 million
Euros annually.” Br. p. 15. The testimony does not specify
if this figure represents worldwide sales or if it is
specific to the United States. Based on the calculation in
Euros the inference would lean more towards worldwide sales.
Further, there is no evidence to put such sales numbers in
the context of the clothing industry and accessories.
Presumably the vast majority of the sales numbers are from
the clothing line, but the record provides no information on
this issue.
In short, the record evidence does not show such
extensive public exposure to rise to the level of fame such
that it plays a dominant role in the determination. Lacoste
Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB
2009) (“Because of the extreme deference that we accord a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
Opposition No. 91188863
11
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove
it”); Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901 (TTAB 2007).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). 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 entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result.
We first note that because applicant seeks registration
in standard characters, its mark is not limited to any
particular depiction. The rights associated with a mark in
standard characters reside in the wording and not in any
particular display. In re RSI Systems, LLC, 88 USPQ2d 1445
(TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d
2012, 2015 (TTAB 1988); TMEP 1207.01(c)(iii) (7th ed. rev.
2010). Thus, the minimal stylization in registrant’s mark
cannot serve to distinguish the marks, inasmuch as we must
consider applicant’s mark “regardless of font style, size,
Opposition No. 91188863
12
or color.” Citigroup Inc. v. Capital City Bank Group Inc.,
98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
While it is true that applicant’s mark begins with the
word MANGO, which can serve to increase similarity, see Palm
Bay Imports, 73 USPQ2d at 1689, in this case we read
applicant’s mark as a unitary phrase MANGO BEACH which has
the connotation and commercial impression of a place. This
is very different from opposer’s mark that evokes simply the
fruit. We find the overall connotation and commercial
impressions quite different and sufficient to outweigh any
similarities in appearance or sound based on the common
element.
Moreover, to the extent the word “mango” in applicant’s
mark presents a separate commercial impression apart from
the unitary phrase, it is merely descriptive of applicant’s
product. As applicant points out, the USPTO required
applicant to disclaim MANGO because it is merely descriptive
of the scent of its products. Although there is no
counterclaim, we may make findings as to the inherent
strength of opposer’s mark and we find it to be highly
suggestive in connection with soaps and fragrances.6

6 Although opposer has testified that its soaps and perfumes do
not have a mango scent, that does not detract from the suggestive
nature of the term in connection with these goods, in general.
The question is how would consumers view this term in connection
with such goods.

Opposition No. 91188863
13
Mango is defined as “a tropical fruit ... with a ...
juicy aromatic pulp.”7 Applicant submitted examples of
third-party use of the term “mango” in connection with skin
lotion or soap. See Foad Roghani Test. Exhs. 4 (Suave
Naturals Mango Mandarin Lotion) and 5 (The Body Shop Mango
Shower Gel); Passarell Depo. Exh. 13 (California Mango).
Examples of third-party use may be used to show that a mark
is relatively weak and entitled to only a narrow scope of
protection. Palm Bay Imports, 73 USPQ2d at 1693. Applicant
also submitted third-party registrations for soap, skin
lotion and fragrances that include the word MANGO in their
marks. See App. NOR Exh. A (Reg. No. 3488730 MANGO MAGIC,
Reg. No. 3193611 BRAZILIAN MANGO GRAPEFRUIT, Reg. No.
2664840 JAMAICAN MANGO & LIME). Third-party registrations
may be used to show that a portion of a mark is descriptive,
suggestive, or so commonly used that the public will look to
other elements to distinguish the source of the goods. In
re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Used
in this manner, third-party registrations are similar to
dictionaries showing how language is used. Textronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95

7 Merriam-Webster’s Collegiate Dictionary (10th ed. 1993). The
Board may take judicial notice of dictionary definitions. In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Opposition No. 91188863
14
(CCPA 1976). We find this evidence sufficient to establish
that, similar to applicant’s mark, the word “mango” is used
for these types of goods to describe a characteristic of the
goods, namely the scent.
Additions to marks may be sufficient to avoid a
likelihood of confusion if the marks in their entireties
convey significantly different commercial impressions or the
matter common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely
descriptive or diluted.
In Citigroup Inc. v. Capital City Bank Group, Inc., 637
F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011), the Court of
Appeals for the Federal Circuit (Court) affirmed the Board’s
conclusion of no likelihood of confusion based, in part, on
findings that the phrase CITY BANK is frequently used in the
banking industry and that CAPITAL in applicant’s mark gave
the mark a geographic connotation as well as a look and
sound distinct from opposer’s mark. See also In re Shawnee
Milling Co., 225 USPQ 747, 749 (TTAB 1985) (GOLDEN CRUST for
flour, and ADOLPH’S GOLD’N CRUST and design (with GOLD’N
CRUST disclaimed) for coating and seasoning for food items,
not likely to cause confusion, noting that, because GOLDEN
CRUST and GOLD’N CRUST are highly suggestive as applied to
the respective goods, the addition of ADOLPH’S is sufficient
to distinguish the marks).
Opposition No. 91188863
15
Here, the record establishes that the common element
MANGO is, at a minimum, highly suggestive of oils for
personal use, perfume and soap. Further, the addition of
the term BEACH gives applicant’s mark a geographic
connotation as well as a look and sound different from
opposer’s mark. We find this case also similar to Champagne
Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459 (Fed. Cir. 1998) where the Court affirmed the
Board’s decision, that despite the fact that the goods and
channels of trade were the same and plaintiff’s mark had
“come to serve as a very strong indication of origin for
[its] champagne,” the marks CRISTAL and CRYSTAL CREEK evoked
very different images in the minds of consumers sufficient
to obviate a likelihood of confusion. Id. at 1460, quoting,
slip op. Opposition No. 91080932 at p. 9 (TTAB June 25,
1997).
Opposer argues that it uses its mark on a variety of
goods and similar house marks are used on both clothing and
related accessories.8 Even assuming opposer’s mark is a
“house mark” used on a variety of goods and the record
supports such a finding, this factor does not overcome the
inherent weakness of this term used in connection with these
goods, and the differences between opposer’s and applicant’s

8 The reference to a “Beach Collection” is not supported by
evidence adduced at trial and has not been considered.

Opposition No. 91188863
16
marks. In addition, with regard to opposer’s assertion that
MANGO BEACH would be viewed as “another marketing variant of
[opposer’s] MANGO marks,” as noted earlier opposer’s other
marks are not of record, and it is not clear to what extent
goods are sold under those marks in the United States.9
Moreover, MANGO BEACH does not fit as a variant to MANGO, or
opposer’s other asserted marks, MNG BY MANGO, MNG MANGO and
HE HOMINI EMERITO BY MANGO.
Finally, opposer argues that it has been active in
policing its marks. In its brief, opposer lists seven
opposition proceeding numbers, the respective marks opposed
and the outcome of each proceeding. Once again opposer
attempts to introduce evidence through its brief. The only
proceedings of record are in the form of a list from the
electronic database TTABVUE showing four of the proceeding
numbers asserted by opposer, which was introduced as Exhibit
6 to the Passarell discovery deposition. Because applicant
has responded on the merits with regard to these
proceedings, we have considered the four listed proceedings
in the TTABVUE printout. None of the marks involved in
these proceedings was for applicant’s goods in the instant
case, most were for clothing.

9 Opposer relies on Exhibit 5 to the Passarell deposition but
this is simply an agreement with JCPenney to launch the MNG BY
MANGO brand. As noted supra, this is not evidence that the goods
were actually sold or of the level of actual sales and consumer
exposure to the brand.
Opposition No. 91188863
17
Because the marks are sufficiently different, given the
weakness of the term “mango” in connection with the relevant
goods, the du Pont factor of the dissimilarities of the
marks outweighs the other relevant du Pont factors discussed
above. In view thereof, we conclude that there is no
likelihood of confusion between applicant’s mark MANGO BEACH
and opposer’s mark . See Kellogg Co. v.
Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145
(Fed. Cir. 1991) (“We know of no reason why, in a particular
case, a single du Pont factor may not be dispositive”). See
also, In re E.I. du Pont de Nemours & Co., USPQ at 567
(“[E]ach [of the thirteen elements] may from case to case
play a dominant role”).
In view of the above, opposer has not proven its claim
of likelihood of confusion under Section 2(d) of the
Trademark Act.
Decision: The opposition is dismissed.