Demart Pro Arte, B.V.v.Mike Khemlani

Trademark Trial and Appeal Board

Aug 17, 2001

No. 91092052 (T.T.A.B. Aug. 17, 2001)

8/17/01 Paper No.
51
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Demart Pro Arte, B.V. v. Mike Khemlani
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Opposition No. 92,052 to Application
Serial No. 74/320,303 filed October 2, 1992
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Victor P. Muskin for Demart Pro Art, B.V.

Mike Khemlani pro se.
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Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Mike Khemlani (applicant) seeks to register DALINI
in the form shown below for “toilet water, perfume, body
lotion, cologne, hair shampoo, hair conditioner and
deodorant for personal use.” The intent-to-use
application was filed on October 2, 1992. While
applicant never filed an amendment to allege use, the
record reveals that applicant did make limited sales of
DALINI perfume in 1994.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Op. No. 92,052

On March 26, 1998 Demart Pro Arte B.V. (opposer)
filed a second amended notice of opposition. This second
amended notice of opposition set forth three claims.
First, opposer alleged that it had prior rights in the
marks SALVADOR DALI and DALI for a wide array of goods
and services. Continuing, opposer alleged that pursuant
to Section 2(d) of the Trademark Act, if applicant were
to again commence use of its mark DALINI for perfume and
related goods, there would exist a likelihood of
confusion with opposer’s SALVADOR DALI and DALI marks for
a wide array of goods and services, and in particular,
there would be a strong likelihood of confusion resulting
from the contemporaneous use by applicant of DALINI for
perfume and the use of SALVADOR DALI for perfume.
Second, opposer alleged that applicant is not
entitled to register DALINI because pursuant to Section
2(a) of the Trademark Act, said mark falsely suggests a
connection with a deceased person, namely, Salvador Dali.
In its second amended notice of opposition, opposer did
not specifically allege that it had rights in the name
Salvador Dali. However, opposer’s president testified
that opposer is the company which possesses the rights to
the name and image of
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Op. No. 92,052

Salvador Dali. (Descharnes deposition page 1).
Third, opposer alleged that applicant has not used
his mark DALINI since October 1994, and accordingly has
abandoned his rights in that mark. Oppposer also alleged
that applicant no longer has any bona fide intent to use
the mark DALINI in commerce.
Applicant filed an answer which denied the pertinent
allegations of the second amended notice of opposition.
This case is now ready for final adjudication.
Opposer has made of record evidence and filed a brief.
Applicant did neither. The record in this case is
summarized at pages 4 and 5 of opposer’s brief.
We will consider first opposer’s Section 2(d) claim.
As previously noted, opposer contends that confusion is
most likely to occur when applicant’s mark DALINI and the
mark SALVADOR DALI are both used for the identical goods,
namely, perfume. However, this prong of opposer’s
Section 2(d) claim presents an unusual fact situation
because opposer concedes that “the SALVADOR DALI
[perfume] mark is not owned by opposer.” (Opposer’s brief
pages 13-14). However, opposer contends that this lack
of ownership is of “no significance” because “opposer
derives royalty income from
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Op. No. 92,052

[the SALVADOR DALI perfume] mark and [hence] will be
damaged by lost sales of SALVADOR DALI fragrance
products.” (Opposer’s brief page 14.)
In support of its contention that it may rely upon
the SALVADOR DALI perfume mark simply by virtue of the
fact that it receives royalty income from the use of that
mark, opposer cites the case of Wilson v. Delaunay, 245
F.2d 877, 114 USPQ 339 (CCPA 1957). In that case, the
Court made the following observations: “It is to be noted
that the instant proceeding is an opposition and that
accordingly the issue is not whether appellee (the
opposer) owns the mark in issue or is entitled to
register it, but whether it is likely that he would be
damaged if the registration of the mark would be granted
to the appellant [applicant]. Since appellee [opposer]
has been continuously deriving revenue from the use of
the mark on confections since a time prior to its
adoption by appellant [applicant], it is evident that the
registration of the mark to appellant [applicant] for the
same or closely related goods would be likely to damage
him.” Wilson, 114 USPQ at 341. The Court went on to
specifically note that the revenue which opposer had been
receiving as a result of the use of the mark in question
was
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Op. No. 92,052

royalty income. Wilson, 114 USPQ at 341. We also note
that more recently Professor McCarthy has taken the same
position that an opposer need not own a mark in order to
successfully challenge an applicant’s application, as
demonstrated by the following statement: “The issue is
not whether the opposer owns the mark or is entitled to
register it, but merely whether it is likely that he
[opposer] would be somehow damaged if a registration were
granted to the applicant.” 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 20:7 at page
20-14 (4th ed. 2001).
In support of its contention that it derives royalty
income from the use of the mark SALVADOR DALI on perfume,
opposer relies upon the testimony of its president
(Robert Descharnes) and the testimony of the president of
a company called Cofci S.A. (Jean-Pierre Grivory). Mr.
Grivory testified that Cofci S.A. has been marketing
throughout the world perfume under the trademark SALVADOR
DALI since 1983. (Grivory deposition page 7). When asked
to describe the relationship between opposer and Cofci
S.A., Mr. Grivory testified as follows: “[Opposer] is the
representative of the rights of Salvador Dali, and we
have a relationship with them concerning all the rights
of Salvador Dali.” (Grivory
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Op. No. 92,052

deposition page 8).
Opposer’s president Mr. Descharnes was shown a box
of perfume bearing the mark SALVADOR DALI and which also
bore the trade name Cofci and a portion of opposer’s
trade name, namely, Demarte. Mr. Descharnes then
testified that opposer received royalty income from sale
of this SALVADOR DALI perfume. Mr. Descharnes went on to
note that said royalty income in United States dollars on
an annual basis was in the “seven figure” range.
(Descharnes deposition page 8).
Based upon the foregoing testimony and the holding
of Wilson v. Delaunay, we find that while opposer does
not own the SALVADOR DALI mark for perfume, it has
“interests” in said mark which date to 1983. This is
approximately nine years prior to applicant’s intent-to-
use filing date of October 2, 1992.
Having determined that opposer may rely upon the
SALVADOR DALI perfume trademark on which to base, in
part, its Section 2(d) claim, we now begin our likelihood
of confusion analysis.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the goods and the similarities of the
marks. Federated
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Op. No. 92,052

Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the mark.”).
Considering first the goods, they are, in part,
legally identical. Applicant seeks to register DALINI
for, among other goods, perfume. As previously noted,
opposer has established an “interest in” the SALVADOR
DALI perfume trademark dating back to 1983.
Considering next the marks, we note at the outset
that when the goods of the parties are identical as is
the case here, “the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). This is particularly true when not only are the
goods identical, but in addition they are ordinary
consumer items such as perfume which can be inexpensive.
See Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984)
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir.
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Op. No. 92,052

1984).
At first blush, it would appear that the marks
SALVADOR DALI and DALINI are only somewhat similar.
However, the record demonstrates that the SALVADOR DALI
perfume mark is often referred to as simply DALI per se.
(Grivory exhibit 16, page 61). This is to be expected
because the record demonstrates that Salvador Dali was
“one of the greatest and most famous” painters of the
20th century. (Descharnes deposition page 2). The great
fame of the late Salvador Dali was such that he was often
referred to as simply Dali. Our primary reviewing Court,
in a case involving clothing and perfumes, noted that
when marks consist of given names and surnames, there is
a “recognized practice in the fashion industry of
referring to the surnames alone.” Nina Ricci v. E.T.F.
Enterprises, 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed.
Cir. 1989).
Given this well recognized practice of referring to
SALVADOR DALI perfume as simply DALI perfume, it is quite
appropriate to compare the abbreviated mark DALI with
applicant’s mark DALINI. Obviously, in terms of visual
appearance, the two marks are quite similar. Applicant’s
mark incorporates the DALI mark in its entirety and
merely
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Op. No. 92,052

adds the final letters NI. Moreover, in terms of
pronunciation, the two marks are also quite similar. In
pronouncing applicant’s mark DALINI, one would first have
to pronounce the mark DALI, and then add the NI sound.
In sum, given the fact that we are dealing with
identical consumer items which can be inexpensive and are
purchased with minimal care (i.e. perfume), we find that
consumers familiar with SALVADOR DALI or simply DALI
perfume would, upon encountering DALINI perfume, assume
that the two emanated from a common source. Of course,
it need hardly be said that to the extent that there are
any doubts on the issue of likelihood of confusion, said
doubts must be resolved in favor of opposer whose
“interests in” the SALVADOR DALI and DALI perfume marks
predate applicant’s filing date for its DALINI mark by
nine years. In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
However, in this case any doubts that may exist
regarding the likelihood of confusion are totally
eliminated when one compares the trade dress which
applicant selected for his DALINI perfume with the
preexisting trade dress for SALVADOR DALI perfume. While
it is true that applicant is
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Op. No. 92,052

not seeking to register his trade dress, nevertheless our
primary reviewing Court has made it clear that it is
appropriate to consider the trade dress of applicant’s
product in resolving the issue of likelihood of
confusion. Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284
(Fed. Cir. 1984). Indeed, our primary reviewing Court
has even stated that the similarity of the trade dress of
applicant’s product to opposer’s product can be a
significant factor in determining the issue of likelihood
of confusion. See Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed.
Cir. 1992) (“The multitude of similarities in the trade
dress of PLAY-DOH and FUN-DOUGH products cries out for
recognition ... The trade dress of the marks enhances
their inherently similar commercial
impression.”)(emphasis added). In this case, the trade
dress for applicant’s DALINI perfume is even more similar
to the trade dress for SALVADOR DALI perfume than was the
trade dress for FUN-DOUGH to the trade dress for PLAY-
DOH. The packaging for DALINI perfume is exhibit 10 to
the Grivory deposition and the packaging for the SALVADOR
DALI perfume is exhibit 3 to the Grivory deposition. Not
only do both
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Op. No. 92,052

sets of packaging share virtually the exact same shade of
green, but in addition both sets of packaging have a
marbled texture. In addition, on the front panel of both
sets of packaging there appears a very simple shape which
is outlined in the exact same shade of gold. While the
shape is an oval on the DALINI perfume and is a rectangle
on the SALVADOR DALI or DALI perfume, their commercial
impressions are nevertheless extremely similar. Finally,
we simply note that the size of the packaging for both
products is virtually the same.
Having found that there exists a likelihood of
confusion resulting from the contemporaneous use of the
marks DALINI and SALVADOR DALI or simply DALI on
identical consumer items which can be inexpensive (i.e.
perfume), we elect not to consider the remainder of
opposer’s Section 2(d) claim. Likewise, we elect not to
consider opposer’s Section 2(a) claim or opposer’s claim
that applicant has abandoned its mark DALINI. See
American Paging Inc. v. American Mobilphone Inc., 13
USPQ2d 2036, 2039 (TTAB 1989), aff’d 17 USPQ2d 1726 (Fed.
Cir. 1990)(unpublished); Goldring Inc. v. Towncliffe
Inc., 234 F.2d 265, 110 USPQ 284, 285 (CCPA 1956).
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Op. No. 92,052

Decision: The opposition is sustained.

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