F.D.C. Wholesale Corp.v.La Cibeles, Inc.

Trademark Trial and Appeal Board

Aug 25, 1999

No. 91104891 (T.T.A.B. Aug. 25, 1999)

Paper No. 16
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 25, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
F.D.C. Wholesale Corp.
v.
La Cibeles, Inc.
_____
Opposition No. 104,891 to application Serial No. 74/720,260
filed on August 25, 1995
_____
Mary L. Kevlin and Denise Bricker of Cowan, Liebowitz & Latman,
P.C., for F.D.C. Wholesale Corp.
Bernard Malina of Malina & Wolson for La Cibeles, Inc.
______
Before Simms, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by La Cibeles, Inc. to
register the mark "LOVE MY BABY" and design, as reproduced below,
Opposition No. 104,891
2
for "body soaps, perfume, toilet water, cologne, talcum powder,
creme body lotions, liquid body soap, bar hand soap, perfume
splashes, eau-de-toilette, and dusting powder.".1
Registration has been opposed by F.D.C. Wholesale Corp.
on the ground that opposer "is and for many years has been in the
business of manufacturing and distributing various personal care
products"; that "[a]t least as early as June, 1985, opposer began
using the trademark, LOVE YOUR BABY, on and in connection with
the manufacture and distribution of baby oil, baby shampoo, baby
wipes, petroleum jelly with baby fragrance, and baby powder";
that opposer "subsequently expanded its use of its LOVE YOUR BABY
mark to skin lotions and baby nail clips"; that opposer is the
owner of valid and subsisting registrations of the mark "LOVE
YOUR BABY" for the following goods: (a) "skin lotion";2 (b)
"baby oil, baby shampoo, baby wipes, petroleum jelly with baby
fragrance and baby powder";3 and (c) "baby nail clips";4 that
"[u]pon information and belief, applicant has made no use of its
mark," but that such mark "will be used on products which are
very similar to the products on which opposer uses its LOVE YOUR

1 Ser. No. 74/720,260, filed on August 25, 1995, which alleges a bona
fide intention to use the mark in commerce.
2 Reg. No. 1,393,713, issued on May 20, 1986, which sets forth dates of
first use of July 19, 1985; combined affidavit §§8 and 15. The word
"BABY" is disclaimed.
3 Reg. No. 1,567,811, issued on November 28, 1989, which sets forth
dates of first use for such goods of June 1985. The word "BABY" is
disclaimed. The registration also lists "disposable diapers" and sets
forth dates of first use of the mark in connection therewith of
January 1, 1986.
4 Reg. No. 2,007,421, issued on October 15, 1996, which sets forth
dates of first use of January 1992. The word "BABY" is disclaimed.
Opposition No. 104,891
3
BABY mark"; and that applicant’s mark, when used in connection
with applicant’s products, so resembles opposer’s mark for its
goods as to be likely to cause confusion, mistake or deception.
Applicant, in its answer, has denied the salient
allegations of the opposition.
The record includes the pleadings; the file of the
opposed application; and, as opposer’s case-in-chief, notices of
reliance upon (i) certified copies of its pleaded registrations,
which show in each instance that the registrations are subsisting
and owned by opposer, and (ii) applicant’s responses to certain
of opposer’s interrogatories, which essentially confirm that
applicant has yet to use its "LOVE MY BABY" and design mark.
Applicant, as its case-in-chief, has submitted a notice of
reliance upon plain copies of third-party registrations for marks
which, in each case, consist of or contain the words "LOVE" and
"BABY" or variations thereof.5 Neither party, however, took
testimony. Briefs have been filed, but an oral hearing was not
requested.
Opposer’s priority of use of its "LOVE YOUR BABY" mark
is not in issue since, as previously noted, the certified copies
of the registrations therefor demonstrate that the registrations
are subsisting and owned by opposer. See King Candy Co. v.

5 Although applicant’s notice of reliance lists ten third-party
registrations, copies of only nine of those registrations were
attached. Nevertheless, since opposer, in its initial brief, has
treated the "missing" registration for the mark "BABY LUV" for
"infant’s and toddler’s clothing--namely pajamas, cover-alls,
creepers, polo shirts and underwear" as forming part of the record,
the registration is deemed to have been stipulated into the record and
has accordingly been given consideration.
Opposition No. 104,891
4
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). The only issue to be determined, therefore, is
whether applicant’s "LOVE MY BABY" and design mark, when used in
connection with body soaps, perfume, toilet water, cologne,
talcum powder, creme body lotions, liquid body soap, bar hand
soap, perfume splashes, eau-de-toilette, and/or dusting powder,
so resembles opposer’s "LOVE YOUR BABY" mark for its various baby
care products and/or skin lotion that confusion is likely as to
the origin or affiliation of the parties’ goods.
Notwithstanding the limited record in this case, we are
constrained to agree with opposer that, upon consideration of the
pertinent factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for
determining whether a likelihood of confusion exists, confusion
as to the source or sponsorship of the parties’ products is
likely. In this regard, we note that, on their face, the
respective goods are either virtually identical in part, such as
opposer’s baby powder and applicant’s talcum powder and dusting
powder, or are otherwise closely related toiletries and other
personal-care products for babies and/or adults. The parties’
goods are of such a nature that they obviously would be marketed
through the same channels of trade, including drug stores,
supermarkets, mass merchandisers and department stores, and would
be sold to the same classes of purchasers, including ordinary
consumers. Furthermore, by their very nature, such goods would
for the most part be relatively inexpensive and, because they

Opposition No. 104,891
5
would typically need to be frequently replaced, would not be
purchased with a great deal of care or discrimination.
Applicant, as opposer points out in its reply brief,
"does not deny that the parties’ goods are [virtually] identical
or closely related goods which must be presumed to travel in the
same channels of trade to the same classes of unsophisticated
customers". In fact, applicant’s brief contains no discussion at
all regarding any similarities or dissimilarities between the
parties’ goods, their channels of distribution, or the conditions
under which and buyers to whom sales are made. It is clear,
however, that if applicant’s and opposer’s goods were to be sold
under the same or substantially similar marks, confusion as to
the origin or affiliation thereof would be likely to occur.
Applicant, in this case, focuses its arguments instead
on its contentions that the respective marks overall are so
dissimilar that there is no likelihood of confusion.
Specifically, applicant urges that its mark "is distinctive,
particularly in view of the design portion, [while] Opposer’s
mark is weak as highlighted by the disclaimer of the ... word
BABY"; that, in light of the latter, "all that is left ... in
Opposer’s mark are the words LOVE YOUR"; that, as shown by the
ten third-party registrations which were made of record, "it is
wholly unsurprising that LOVE is commonly paired with BABY in
composite marks for baby products," given the suggestiveness
inherent in the word "love"; and that the "remaining terms YOUR
and MY [in the respective marks] hardly convey similar meaning"
and, "indeed, they are opposites!" Applicant consequently
Opposition No. 104,891
6
maintains that, even "aside from the presence of the distinctive
and, therefore, dominant design portion of Applicant’s mark, the
word portions of the respective marks convey different meanings,"
thereby precluding any likelihood of confusion.
While applicant is correct that the respective marks
must be considered in their entireties, we agree with opposer
that, when the parties’ marks are so considered, confusion would
be likely. Opposer’s "LOVE YOUR BABY" mark and the literal
portion of applicant’s mark, consisting of the words "LOVE MY
BABY," are substantially similar in their overall sound,
appearance and connotation, and engender essentially the same
commercial impression. Both marks consist of or contain a three-
word phrase which starts with the word "LOVE," ends with the word
"BABY" and has a personal pronoun, "YOUR" or "MY," in the middle.
While, in the abstract, such pronouns may be considered opposites
in meaning, in the context of the respective marks, we concur
with opposer that "[i]t is the purchaser’s ’baby’ (whether
literally or figuratively) that is being referred to" in each
instance. The phrase "LOVE MY BABY" in applicant’s mark is thus
substantially similar to opposer’s "LOVE YOUR BABY" mark in
connotation and, in light of their substantial phonetic and
visual similarities, the respective marks project essentially the
same overall commercial impression.
Moreover, as opposer further notes, while applicant’s
mark, unlike opposer’s mark, "contains a design element -- a
drawing of five bare-bottomed infants and toddlers holding and
releasing balloons -- [such feature] does not help to
Opposition No. 104,891
7
differentiate the ... parties’ marks." Although a design feature
of a mark cannot be ignored, it is nevertheless the case that, as
a general proposition, where a composite mark contains both word
and design elements, it is the wording which is usually the
dominant portion thereof because it would be used by consumers in
looking for or requesting the goods by a particular brand name.
See, e.g., In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461, 462 (TTAB 1985); and In re Morrison Industries, Inc.,
178 USPQ 432, 433 (TTAB 1973). Here, as opposer observes, "the
design portion of Applicant’s mark[,] which features babies [and
toddlers,] does not alter the commercial impression of
Applicant’s LOVE MY BABY mark, and indeed reinforces the
impression of the mark as presenting a product appropriate for
babies or those who wish to be babied."
Finally, with respect to applicant’s contention that
the third-party registrations which it introduced as the sole
evidence in its behalf mandate a finding that opposer’s "LOVE YOU
BABY" mark is weak and accordingly is entitled to only a narrow
scope of protection, we note that such registrations do not
establish that the marks which are the subjects thereof are in
actual use and that the purchasing public is consequently
familiar with them. See, e.g., Smith Brothers Manufacturing Co.
v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973) ["in the absence of any evidence showing the extent
of use of any of such marks or whether any of them are now in
use, they provide no basis for saying that the marks so
Opposition No. 104,891
8
registered have had, or may have, any effect at all on the public
mind so as to have a bearing on likelihood of confusion."] As
stated in AMF Incorporated v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973):
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registration is not evidence of what
happens in the market place or that customers
are familiar with them nor should the
existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake or
to deceive.
Furthermore, although the third-party registrations of
record may, at best, serve as indications that, as applied to
certain goods or services, the word "LOVE" is suggestive while
the term "BABY" is descriptive, so that the differences in other
portions of marks containing those words may be sufficient to
render the marks as a whole distinguishable (see, e.g.,
Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB
1975), aff’d, 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)), it
is nevertheless the case that, with the possible exception of the
mark "LOVE ME BABY," none of the third-party registrations is as
similar to opposer’s mark as such mark is to applicant’s mark.
The "LOVE ME BABY" mark, however, like each of the marks "LOVABLE
BABIES," "LOVE-A-BYE BABY" and design, and "BABY LUV," is by
contrast registered for such wholly unrelated goods as "dolls,"
while the marks "BABY LOVE" and "BABY LUV" are respectively
registered for such distinctly different services and goods as
"retail store services featuring infant and child clothing,
Opposition No. 104,891
9
furniture, accessories and toys" and "infant’s and toddler’s
clothing--namely pajamas, cover-alls, creepers, polo shirts and
underwear". None of such marks is for the type of closely
related toiletries or personal care products that are involved in
this proceeding.
With respect to the four other third-party
registrations, the two for the mark "LOVE’S BABY SOFT," which
were issued to different entities, cover "cologne spray, light
cologne splash, body mist, cologne mist, skin moisturizing
lotion, body wash, body powder, personal deodorant, perfume, all
over body spray, and gift sets" and "perfume; cologne; hair
shampoo and creme rinse; bubble bath; body lotion; body talcum
powder; and facial cleanser," while the two for the mark "BABY
LOVE," which also issued to different registrants, are for "hair
shampoo products; namely, shampoos, conditioners, fixatives and
hair dressings" and "medicated skin preparation for diaper rash".
Although such goods, like those involved in this proceeding, are
all basically toiletries and other personal-care products for
babies and/or adults, none of these third-party marks is as
similarly structured as are applicant’s and opposer’s marks. As
opposer persuasively points out in its initial brief:
None of the third party [sic] registrations
use the word "LOVE" as a verb; none end with
the word "BABY"; and none contain a pronoun
in a phrase between the words "LOVE" and
"BABY."
We therefore concur with opposer that not one of the ten third-
party registrations is relevant to or otherwise has a bearing
upon the determination of the issue of likelihood of confusion.
Opposition No. 104,891
10
In consequence of the above, we conclude that customers
and prospective purchasers, familiar with opposer’s "LOVE YOUR
BABY" mark for its various baby care products and/or skin lotion,
would be likely to believe, upon encountering applicant’s
substantially similar "LOVE MY BABY" and design mark for body
soaps, perfume, toilet water, cologne, talcum powder, creme body
lotions, liquid body soap, bar hand soap, perfume splashes, eau-
de-toilette and dusting powder, that such closely related
toiletry and personal care products emanate from, or are
otherwise sponsored by or affiliated with, the same source.
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
G. D. Hohein
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board