L’Oreal USA Creative, Inc.v.Interconsumer Products LimitedDownload PDFTrademark Trial and Appeal BoardFeb 18, 2011No. 91185552 (T.T.A.B. Feb. 18, 2011) Copy Citation Mailed: Feb. 18, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ L’Oréal USA Creative, Inc. v. Interconsumer Products Limited _____ Opposition No. 91185552 to application Serial No. 79038941 filed on February 15, 2007 _____ Robert L. Sherman of Paul, Hastings, Janofsky & Walker LLP for L’Oréal USA Creative, Inc. Scott D. Woldow of Smith, Gambrell & Russell, LLP for Interconsumer Products Limited. ______ Before Grendel, Taylor and Ritchie, Administrative Trademark Judges. Opinion by Grendel, Administrative Trademark Judge: Interconsumer Products Limited (“applicant”) seeks registration on the Principal Register of the mark NICE & LOVELY (and design), depicted below, for goods identified in THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91185552 2 the application as “perfumery, essential oils, cosmetics and hair lotions.”1 L’Oréal USA Creative, Inc. (opposer) has opposed registration of applicant’s mark, alleging priority and likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d), as the ground for opposition. Specifically, opposer alleges (in pertinent part) that it owns Registration No. 1393705,2 which is of the mark DARK & LOVELY (registered in standard character form; DARK disclaimed), for goods identified in the registration as “hair care products, namely, protein shampoo, conditioner, hair dress/conditioner, finishing sheen spray, 1 Serial No. 79038941, filed on February 15, 2007. The application includes the following “Description of Mark” statement: “The mark consists of the following. The color beige appears in the bottom left rectangle, the color gray appears in the top right and left side of the rectangle, the color white appears in the drops in the rectangle, the color purple appears in the wording ‘NICE’ and ‘LOVELY’ and the color red appears in the ampersand.” The application also states that “The colors beige, gray, white, purple, and red are claimed as a feature of the mark.” 2 Issued on the Principal Register on May 20, 1986; renewed. Opposition No. 91185552 3 detangling/conditioning shampoo, and deep conditioner.”3 Opposer further alleges that applicant’s mark, as applied to the goods identified in the application, so resembles opposer’s previously-registered mark as to be likely to cause confusion, to cause mistake, or to deceive. Applicant answered the notice of opposition by denying the allegations essential to opposer’s claim. Opposer submitted evidence at trial: applicant did not. The case is fully briefed. After careful consideration of the evidence of record and the arguments of the parties, we sustain the opposition. The evidence of record includes the pleadings, and, by rule, the file of applicant’s application. At trial, 3 Opposer also alleged in the notice of opposition (and proved at trial) its ownership of two other existing registrations, i.e., Reg. No. 0963797 (issued on July 10, 1973), of the mark DARK & LOVELY for goods identified in the registration as “permanent shampoo-in hair color,” and Reg. No. 3262867 (issued on July 10, 2007), of the mark DARK & LOVELY KIDS for goods identified in the registration as “hair care, hair styling and non-medicated hair treatment preparations.” We note here that in order to prevail in this case, opposer need not establish (and we need not find) likelihood of confusion as to all of opposer’s pleaded registrations. A finding of likelihood of confusion as to any of the pleaded registrations would suffice to establish opposer’s Section 2(d) ground of opposition. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). We find in this case that opposer’s Reg. No. 1393705 (referenced above in the main text) suffices in itself as the basis for our decision in this case. See discussion infra. Accordingly in this opinion, we need not address, and in the interest of judicial economy we shall not address, these other two pleaded registrations. Cf. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009). (Opposer also asserts a claim of prior common law rights in its mark(s). However, like opposer’s other registrations, we need not reach that claim in our decision.) Opposition No. 91185552 4 opposer submitted the testimony deposition of its officer Angela Guy and exhibits thereto (“Guy depo.”).4 Opposer also submitted, via notice of reliance, applicant’s responses to opposer’s interrogatories.5 To prevail in this opposition proceeding, opposer must establish (1) its standing to oppose, and (2) at least one statutory ground of opposition to registration of applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1726 (TTAB 2010). Opposer has properly made its pleaded Reg. No. 1393705 of record, which shows that the registration is in effect and is owned by opposer.6 In view thereof, and because opposer has established that its pleaded Section 2(d) claim is not frivolous, we find that opposer has a real interest in the outcome of this proceeding and thus a 4 Opposer submitted Ms. Guy’s deposition transcript and exhibits as part of its notice of reliance. This testimony deposition should have been filed separately, pursuant to Trademark Rule 2.125(c), 37 C.F.R. §2.125(c). Notwithstanding, because the deposition otherwise is in proper form, we have considered it. 5 Opposer’s notice of reliance also includes (as Exh. Nos. 28-38) documents which assertedly were produced by applicant in response to opposer’s request for production of documents. These documents are not properly submitted via notice of reliance alone, and we have not considered them. See Trademark Rule 2.120(j)(3)(ii), 37 C.F.R. §2.120(j)(3)(ii). 6 (Guy depo. at pp. 6-8 and Exhibit 3.) Opposer also made the registration of record by submitting it as an exhibit to its notice of opposition. See Trademark Rule 2.122(d)(1), 37 C.F.R. §2.122(d)(1). Opposition No. 91185552 5 reasonable basis for believing that it would be damaged by the issuance to applicant of the registration applicant seeks. Accordingly, we find that opposer has established its standing to oppose registration of applicant’s mark. See Cunningham v. Laser Golf Corp., supra, 55 USPQ2d 1842, 1844; see also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Furthermore, because opposer’s pleaded registration is of record, Section 2(d) priority is not an issue in this case as to the mark and goods covered by that registration. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); Miss Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562 (TTAB 2007). Our likelihood of confusion 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 (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203-04 (Fed. Cir. 2003); Cunningham v. Laser Golf Corp., supra, 55 USPQ2d 1842, 1845. We begin our likelihood of confusion analysis with the second du Pont factor, under which we determine the similarity or dissimilarity of applicant’s goods, as they are identified in applicant’s application, and opposer’s Opposition No. 91185552 6 goods, as they are identified in opposer’s registration. Applicant’s goods are identified in the application as “perfumery, essential oils, cosmetics and hair lotions.” Opposer’s goods as identified in its registration are “hair care products, namely, protein shampoo, conditioner, hair dress/conditioner, finishing sheen spray, detangling/conditioning shampoo, and deep conditioner.” In this case, we need only and shall only base our findings under the second du Pont factor on a comparison of the hair care products identified in opposer’s registration and the “hair lotions” identified in applicant’s application. See Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).7 See also Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Assuming arguendo that applicant’s “hair lotions” are not in fact identical to (and merely another name for) opposer’s “hair care products, namely ... conditioner, hair dress/conditioner, ... and deep conditioner,” we find that they are highly similar, complementary and otherwise closely 7 “It is settled ... that in order to prevail on a Section 2(d) ground of opposition, an opposer need not prove priority and likelihood of confusion as to all of the goods or services identified in the applicant's application. Rather, if priority and likelihood of confusion are established as to any of the goods or services identified in an opposed class of goods or services, the opposition to registration of the mark as to all of the goods or services identified in that class will be sustained.” Baseball America Inc., 71 USPQ2d at 1848 n.9. Opposition No. 91185552 7 related hair care products. On the face of the respective identifications of goods themselves, the goods clearly are similar. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Moreover, the similarity and relatedness of hair lotions and opposer’s hair care products are established by the fact that opposer’s line of DARK & LOVELY hair products includes products that Ms. Guy specifically identified as “hair lotions.” (Guy depo. at 13, 24 and 39.) Finally, we note that applicant has presented no evidence to support its merely conclusory assertion that these respective hair care products by their nature are unrelated. For these reasons, we find that the parties’ respective goods are highly similar under the second du Pont factor, and that this finding weighs heavily in support of a conclusion that confusion is likely. Under the third du Pont factor, we compare the trade channels and classes of purchasers for the goods. Because there are no restrictions or limitations in opposer’s and applicant’s respective identifications of goods, we presume that the goods are or would be marketed in all normal trade channels and to all normal classes of purchasers for such goods. See Packard Press Inc. v. Hewlett-Packard Co., 227 F.2d 1352, 56 USPQ2d 1351, 1355 (Fed. Cir. 2000). Because the parties’ hair care products by their nature are or would Opposition No. 91185552 8 include ordinary consumer items, we find that the normal trade channels for the goods would include ordinary retail trade channels, including mass merchandisers, drugstores, and grocery stores. The record establishes that these in fact are some of the trade channels or intended trade channels for the parties’ respective goods. (Guy depo. at 26; applicant’s responses to opposer’s Interrogatory Nos. 3, 13 (Opposer’s Notice of Reliance Exh. 27).) Also, opposer and applicant advertise or intend to advertise their products in many of the same media, including print and broadcast media. (Guy depo. at 40; applicant’s response to opposer’s Interrogatory No. 5 (Opposer’s Notice of Reliance Exh. 27).) For these reasons, we find that the similarity of trade channels and classes of purchasers under the third du Pont factor supports a conclusion that confusion is likely. Under the fourth du Pont factor (conditions of purchase), we find that applicant’s and opposer’s hair care products by their nature are or would include ordinary and inexpensive consumer items, which would be purchased by ordinary consumers with only a normal degree of care. We find that these conditions of purchase under the fourth du Pont factor support a conclusion that confusion is likely. The fifth du Pont evidentiary factor requires us to consider evidence of the fame of opposer’s mark, and to give Opposition No. 91185552 9 great weight to such evidence if it exists. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Opposer contends that its mark is famous, relying on the (confidential in part) testimony of its witness Ms. Guy. After carefully reviewing this testimony, we find that it is insufficient to establish that opposer’s mark is a famous mark for purposes of the fifth du Pont factor. The sales and advertising figures lack context, as do the market share numbers when considered in the context of the goods as they are broadly identified in the registration. The testimony regarding the Praxis study lacks sufficient detail as to the nature and format of the study to be of significant probative value on the question of fame. In short, we find that the evidence of record does not establish that opposer’s mark is the type of truly famous mark which would be entitled to the greatly expanded scope of protection that is afforded to a famous mark under our case law. For these reasons, we find that the fifth du Pont factor is neutral in our likelihood of confusion analysis. Under the sixth du Pont factor (the number and nature of similar marks in use on similar goods), we find there to be no evidence of any such third-party use which might tend to lessen the scope of protection to which opposer’s mark is entitled. Applicant has presented no evidence to support Opposition No. 91185552 10 its mere assertion in its brief that LOVELY is the subject of other registered trademarks. There is no evidence of third-party marks which include the combination of an ampersand and LOVELY, i.e., “& LOVELY.” Given the absence of evidence, we find that this factor is neutral; it certainly does not weigh in applicant’s favor. We turn finally to the first du Pont factor, under which we determine the similarity or dissimilarity of applicant’s mark and opposer’s mark when they are viewed in their entireties in terms of appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc., supra, 73 USPQ2d 1689, 1692. The test, under the first du Pont factor, 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 overall commercial impressions as to be likely to cause confusion when used on or in connection with the goods and/or services at issue. This necessarily requires us to take into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Opposition No. 91185552 11 Comparing the marks in terms of appearance, we find that they look similar to the extent that both include an ampersand followed by the word LOVELY. Applicant’s mark includes a background carrier for the words, but we find that feature to be de minimis in distinguishing the marks visually. The stylization of the lettering in applicant’s mark is not legally significant because opposer’s mark is registered in standard character form, and thus may be used and displayed by opposer in stylized lettering similar to the lettering in applicant’s mark. See Cunningham v. Laser Golf Corp., supra, 55 USPQ2d 1842, 1847. The words NICE and DARK are comprised of different-looking letters, but they also look similar to the extent that they both are four- letter words. Comparing the marks in their entireties in terms of appearance, we find that the points of similarity outweigh the points of dissimilarity. In terms of sound, we find the marks to be similar to the extent that “& LOVELY” would be pronounced the same in both marks, i.e., as “and lovely.” NICE and DARK sound different, but they are both one-syllable words. Both marks consist of four syllables, the last three of which are identical in both marks. In their entireties, we find the marks to be similar in sound. In terms of connotation, we find that “& LOVELY” means the same thing in both marks. NICE and DARK have different Opposition No. 91185552 12 meanings, but both are simple adjectives that describe desirable attributes of hair, and both are combined with “& LOVELY.” Comparing the marks in their entireties, we find that the identical meaning of “& LOVELY” in the marks outweighs the difference in meaning of NICE and DARK. In terms of commercial impression, we find that the marks are very similar. They both are composite phrases which are constructed in the same way. They both begin with a short and suggestive adjective and end with the identical word LOVELY, with those two words connected by an identical ampersand. This significant similarity in the basic format and structure of the two marks outweighs the difference in the first words of the two marks. Comparing the marks in their entireties, we find them to be similar. The marks can be distinguished when viewed side-by-side, but as noted above, that is not the test under the first du Pont factor. Moreover, in cases such as this one where the parties’ goods are so highly similar, the degree of similarity between the marks which is required to support a finding of likelihood of confusion declines. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260- 61 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). We find under this standard that applicant’s mark is sufficiently similar to opposer’s mark that Opposition No. 91185552 13 confusion is likely to result if the marks were to be used on the highly similar goods involved in this case. For these reasons, we find that the similarity of the marks under the first du Pont factor supports a conclusion that confusion is likely. Considering and balancing all of the evidence of record pertaining to the relevant du Pont factors, we conclude that confusion is likely. We have considered all of applicant’s arguments to the contrary, but we are not persuaded by them. To the extent that any doubts might exist as to the correctness of our conclusion that confusion is likely, we resolve such doubts against applicant. See Baseball America Inc. v. Powerplay Sports Ltd., supra, 71 USPQ2d 1844, 1849; Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1663 (TTAB 2002). Decision: The opposition is sustained. 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