Lush Ltd.v.Luscious, LLC Cosmetic Warriors Limited v. Luscious, LLC

Trademark Trial and Appeal Board

Aug 1, 2012

No. 91169017 (T.T.A.B. Aug. 1, 2012)

Hearing: Mailed:
March 13, 2010 August 1, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Lush Ltd.
v.
Luscious, LLC
_____

Opposition No. 91158982
to application Serial No. 78143126
filed on July 11, 2002
_____

Cosmetic Warriors Limited
v.
Luscious, LLC
_____

Opposition No. 91169017
to application Serial No. 78506882
filed on October 27, 2004

_____

John A. Clifford, Rachel Zimmerman and Danielle I.
Mattessich of Merchant & Gould PC for Lush Ltd. and Cosmetic
Warriors Limited.

Austin G. Bosarge of Turning Point Law for Luscious, LLC.
______

Before Kuhlke, Wellington and Lykos, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Luscious, LLC (Luscious), seeks registration
of the mark LUSCIOUS COSMETICS (“Cosmetics” disclaimed) for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91158982 and 91169017
2
goods identified as “cosmetics, namely, non-medicated lip
balm, lip cream, lip gloss, lip liner, lip stick, lip sheer,
lip stain, eye make-up, eye make-up remover, eye pencils,
eye shadow, eye liners, eye brow pencils, eye cream, eye
gel, eye balm, face powder, face concealers, face
foundation, face cleansers, face creams, face emulsions,
face masks, face scrubs, pre-moistened cosmetic towelettes,
blush, bronzer, highlighter, body powder, cheek stain,
mascara, brow gel, hair mascara, bath oil, bath tablets,
bath gels, bath soaps, body creams, skin lotion, body masks,
body scrub, body gel, hair mask, nail polish, nail lacquer,
cuticle cream, nail oil,” in International Class 3,1 and
services identified as “online retail store services, retail
store services and mail-order retail services all featuring
cosmetics, toiletries, spa, skin, hair care, and beauty care
products, accessories, apparel, home décor and bags,” in
International Class 35.2

1 Serial No. 78143126, filed on July 11, 2002, based on
allegations of first use on January 23, 2002 and first use in
commerce on June 28, 2002 under Trademark Act Section 1(a), 15
U.S.C. § 1051(a). The mark is depicted in typed form.
Applicant’s amendment to assert a Section 1(b) basis, 15 U.S.C. §
1051(b), for all of the goods, with the exception of nail polish
was accepted on April 13, 2006.

2 Serial No. 78506882, filed on October 27, 2004, based on an
allegation of a bona fide intention to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
The mark is depicted in standard characters. This application
also includes goods in International class 18; however, opposer,
Cosmetic Warriors Limited, filed a notice of opposition against
only the services listed in International Class 35.

Opposition Nos. 91158982 and 91169017
3
Opposers, Lush Ltd. (Lush) and Cosmetic Warriors
Limited (CWL) separately, in each of their oppositions,
opposed registration of applicant’s mark on the grounds
that, as applied to applicant’s goods and services, the mark
so resembles opposers’ previously used and registered LUSH
mark for a wide variety of cosmetic products, including lip
balms, bath gels and bath soaps, body powder, face creams
and skin lotions, and retail services (mail order, online
and brick and mortar all featuring these cosmetic products)
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). In its opposition against Serial No. 78143126, in
addition to pleading prior use, Lush pleaded ownership of
Registration No. 2282428. In its opposition against Serial
No. 78506882, opposer CWL pleaded ownership of Registration
No. 2853483.
By its answers in each opposition, applicant denies the
salient allegations.3
As a preliminary matter we note that although
consolidated, the proceedings maintain their separate
identity. See Trademark Trial and Appeal Board Manual of
Procedure (TBMP) § 511 (3rd ed. rev. 2012). Each plaintiff
must prove its standing and claim against the specific

3 Applicant’ “affirmative defenses” are more in the nature of
amplifications of its denials.

Opposition Nos. 91158982 and 91169017
4
application it opposed. Thus, Lush must prove its standing,
priority and likelihood of confusion against application
Serial No. 78143126, and CWL must prove its standing,
priority and likelihood of confusion against application
Serial No. 78506882.
The record includes the pleadings and, by operation of
Trademark Rule 2.122(b), the files of the opposed
applications. Opposers submitted the testimony depositions,
with exhibits, of Sarah L. Cole, head of tax and legal for
Lush, Brandi Halls, North American Public Relations Manager
for Lush Cosmetics NY, LLC, a subsidiary of Lush, and
Danielle Ida Mattessich, opposers’ outside counsel; and
opposers' notice of reliance on files of the subject
applications,4 several of CWL’s registrations, applicant’s
responses to certain interrogatories, the discovery
deposition of Charity Vance (applicant’s owner), dictionary
definitions and an article from a printed publication.
Applicant submitted a notice of reliance on applicant’s
responses and supplemental responses to certain
interrogatories and excerpts from the discovery deposition
of Charity Vance (pursuant to Trademark Rule 2.120(j)(5)),
opposers' responses to certain interrogatories and requests
for admissions, motions and orders from this proceeding,

4 The submission of the subject application files was unnecessary
as they were already of record pursuant to Trademark Rule
2.122(b).
Opposition Nos. 91158982 and 91169017
5
portions of two of applicant’s application files not subject
to these proceedings, third-party registrations, and
portions of one of opposer’s application files not subject
to these proceedings.
THE PARTIES
The opposers, CWL and Lush, are related companies that
develop, produce and sell cosmetic and personal care
products.5 CWL has a master license agreement with Lush to
“make use of the intellectual property of [CWL] and to
manufacture, distribute and market products under the Lush
mark and other marks that [CWL] owns.”6 CWL now owns
Registration No. 2282428 issued on October 5, 1999, for the
mark LUSH (in typed form) for “perfumes; non-medicated
toilet and cosmetic preparations, namely, lotions, powders
and creams for use on the skin, personal deodorants,
preparations for the care of the hair, shampoos, soaps” in
International Class 3, pleaded by Lush in Opposition No.
91158982, and Registration No. 2853483 for the mark LUSH for
“bringing together, for the benefit of others, of a variety
of goods enabling customers to conveniently view and
purchase those goods in a retail cosmetics and toiletries
store; the bringing together, for the benefit of others, of

5 See, e.g., Cole Test. pp. 7, 10.

6 Cole Test. p. 7.

Opposition Nos. 91158982 and 91169017
6
a variety of goods, enabling customers to conveniently view
and purchase those goods from a mail order catalogue, or
from an Internet web site, specializing in the marketing of
cosmetics and toiletries” in International Class 35, pleaded
by CWL in Opposition No. 91169017.7 These registrations are
valid and subsisting.8
Applicant, Luscious, was originally formed between 1999
and 2000. After selecting the name Luscious in 2000,
applicant considered what product line it would pursue, from
bikinis to cosmetics.9 Applicant eventually settled on
cosmetics, beginning with nail polish.10
STANDING/PRIORITY
Because CWL has made its pleaded Registration No.
2853483 of record and has shown that the registration is
valid and subsisting and owned by CWL, CWL has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue.11 See King Candy Co., Inc. v.

7 Cole Test. pp. 13-14, Exhs. 31-33.

8 Id.

9 App. NOR Exh. 2 (Applicant’s Responses to Opposers'
Interrogatories).

10 Opp. NOR, Exh. 7 (Applicant’s Responses to Opposers’
Interrogatories), Exh. 8 (Charity Vance’s Discovery Deposition).

11 As applicant noted, although opposer introduced status and
title copies of several other registrations, it did not plead
them. We add that opposer never sought to amend the pleadings to
assert these additional registrations. In view thereof, we have
only considered the pleaded and proven registrations in making
our findings as to standing and priority.
Opposition Nos. 91158982 and 91169017
7
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
As noted above, Lush pleaded ownership of Registration
No. 2282428. However, that registration is now owned by
CWL.12 Thus, Lush may not rely on that registration for
standing and priority. However, Lush has proven its
standing and priority. The record establishes that Lush is
CWL’s licensee and that in 1996 Lush first sold, via mail
order in the United States, soap, bath bombs, bath melts,
and skin preparations under the mark LUSH.13 Further, the
record shows that Lush has continuously sold such products
in the United States and has expanded its channels of trade
to include the internet, its own brick and mortar stores and
third-party department stores).14
Accordingly, we turn to the question of likelihood of
confusion.
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

12 Cole Test. p. 13, Exh. 31. Moreover, based on the execution
date of the assignment it is not clear that Lush owned the
registration at the time it filed the opposition. Nonetheless,
Lush asserted prior use based on common law rights.

13 Cole. Test. pp. 7, 10, 12.

14 Cole Test. p. 19.

Opposition Nos. 91158982 and 91169017
8
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).
Opposers presented evidence and argument on the factors
of the similarity of the marks, the relatedness of the goods
and services, channels of trade, classes of purchasers and
the strength of the LUSH mark.
We begin with the strength of opposers’ LUSH mark in
order to determine the scope of protection to be accorded
opposers’ mark as we analyze the other du Pont factors.
The strength 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).
As noted above, the record shows that the LUSH brand
has been growing in success over the past 16 years. In
promoting its brand, opposers have employed both somewhat
untraditional as well as more traditional advertising
methods. Promotion of the mark began with
catalog/newsletters and word of mouth, which included a
celebrity fan base.15 Over time the extent of its
advertising has grown to include all types of traditional

15 Halls Test. pp. 12, 20; Cole Test. pp. 34-35.
Opposition Nos. 91158982 and 91169017
9
and social media (print, radio, internet – website,
Facebook, Twitter, YouTube – and television), including
being featured on various morning and afternoon talk shows
(e.g., Ellen). In print, the LUSH mark is featured in
prominent advertising in a wide variety of nationally
distributed magazines (Cosmo Girl, Nylon, Allure, Better
Homes and Gardens, American Baby, Family Circle).16 The
LUSH mark also receives exposure through opposers’ various
charitable campaigns, most notably its “charity pot” program
whereby proceeds from the sale of specific products go to
support various charities and non-governmental organizations
within a community.17 The manner in which opposers put the
brand in front of consumers is also designed to attract
attention. For example, their “naked campaign,” addressing
the issue of excess packaging, involved employees promoting
the products in front of the stores attired only in their
shop aprons.18
On balance we find that while this record does not
support a finding of fame such that it “plays a ‘dominant’
role in the process of balancing the du Pont factors,” Recot
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000), it does establish that opposers’ mark LUSH is

16 Halls Test. pp. 21-38; Cole Test. p. 35.

17 Cole Test. pp. 34, 45.

18 Cole Test. p. 43.
Opposition Nos. 91158982 and 91169017
10
very strong and widely known.19 In view thereof, we accord
the mark a broad scope of protection.
We now consider whether the marks LUSH and LUSCIOUS
COSMETICS are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. In making this finding, the focus is
on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
The first part of applicant’s mark LUSCIOUS is
identical in sound and very similar in appearance to the
first part of opposers’ mark LUSH. Hercules Inc. v.
National Starch & Chemical Corp., 223 USPQ 1244, 1246 (TTAB
1984) (“considering the marks NATROL and NATROSOL in their
entireties, the clearly dominant aspect of both marks is
that the first four letters and the final two are the
same.”). See also Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689; Presto Products Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“there are also similarities
between them in that both start with the term ‘KID’ a matter

19 Applicant’s arguments regarding the timing of opposers’ fame
are misplaced. For purposes of a claim under Section 2(d), a
plaintiff may rely on the establishment of fame through the trial
period.

Opposition Nos. 91158982 and 91169017
11
of some importance since it is often the first part of a
mark which is most likely to be impressed upon the mind of a
purchaser and remembered”).
More importantly, both marks include in their
definitions the words “luxurious,” “aromatic” and
“sensuous.”20 As such, the connotation of the marks, viewed
in connection with the relevant goods and services, is
identical. Notably, one of the definitions of the word
“lush” is “luscious” and the words are used
interchangeably.21 Opposers’ uses of the various terms
derived from LUSH further demonstrate the close connotation
between the marks. For example, opposers have employed the
word LUSHIOUSLY in one of their advertising campaigns.
Applicant quite rightly argues that the use of this form
began after applicant’s use of its LUSCIOUS mark. We simply
note this use in further support of our finding that the
respective marks have identical connotations. Further, the
additional word “cosmetics” in applicant’s mark simply names
the goods and does not serve to distinguish the marks. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (It is well settled that one feature of a
mark may be more significant than another, and it is not

20 Opp. NOR Exh. 9 Webster’s Third New International Dictionary of
the English Language (2002).

21 Id.; Opp. NOR Exh. 10 Merriam-Webster’s Collegiate Thesaurus
(1988).
Opposition Nos. 91158982 and 91169017
12
improper to give more weight to this dominant feature when
evaluating the similarities of the marks.) Given the
identical connotation and the similarities in sound and
appearance we find the overall commercial impression to be
similar. In view thereof, we find the marks in their
entireties to be similar, which favors finding a likelihood
of confusion.
This brings us then to our consideration of the
similarities between opposers’ and applicant’s goods and
services, channels of trade and classes of purchasers. We
must make our determinations under these factors based on
the goods and services as they are recited in the
applications and registrations. See Octocom Systems Inc. v.
Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The 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.”); In re Elbaum,
211 USPQ 636 (TTAB 1981).
Because each proceeding has a different plaintiff
challenging a different application with different goods and
services we make our analysis separately and begin with
Opposition Nos. 91158982 and 91169017
13
CWL’s opposition to application Serial No. 78506882. As
noted above, applicant’s services are identified as “online
retail store services, retail store services and mail-order
retail services all featuring cosmetics, toiletries, spa,
skin, hair care, and beauty care products, accessories,
apparel, home décor and bags.” CWL’s services are
identified in its pleaded Registration No. 2853483 as
“bringing together, for the benefit of others, of a variety
of goods enabling customers to conveniently view and
purchase those goods in a retail cosmetics and toiletries
store; the bringing together, for the benefit of others, of
a variety of goods, enabling customers to conveniently view
and purchase those goods from a mail order catalogue, or
from an Internet web site, specializing in the marketing of
cosmetics and toiletries” in International Class 35. Both
parties’ services include retail services in the field of
cosmetics and toiletries provided in store, online and via
mail order, as such, they are legally identical.
Further, in view of the absence of any limitations and
the identical nature of the services we must presume that
the channels of trade and classes of purchasers overlap.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
Opposition Nos. 91158982 and 91169017
14
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade.”);
and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
With regard to Lush’s opposition to application Serial
No. 78143126, Lush’s soaps and skin preparations encompass
many of the goods in the application (e.g., bath oil, bath
tablets, bath gels, bath soaps, body creams, skin lotion,
body gel), and therefore are legally identical.
Furthermore, it is sufficient for a finding of likelihood of
confusion if the relatedness is established for any item
encompassed by the identification of goods within a
particular class in the application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986
(CCPA 1981); Baseball America Inc. v. Powerplay Sports Ltd.,
71 USPQ2d 1844, 1847 n.9 (TTAB 2004).
With regard to the channels of trade and classes of
purchasers, in view of the absence of restrictions in the
application as to trade channels and purchasers, we must
presume that applicant’s goods would be sold in all ordinary
channels of trade and offered to all ordinary classes of
consumers for these goods. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
Opposition Nos. 91158982 and 91169017
15
2002); and Octocom, 16 USPQ2d 1783. Such trade channels
would include department stores like Macy’s.
Certainly, Lush’s types of goods are routinely sold in
department stores. In fact, in addition to selling its
goods via mail order, online and in its own stores, Lush
also sells its products in the cosmetic section of Macy’s
department stores.22 Further, Lush’s consumers include
people of all ages.23 Thus, for purposes of our analysis,
the channels of trade overlap, at a minimum, in department
stores, and the goods are offered to some of the same
classes of consumers.
As to the conditions of sale, Lush products range in
price from five dollars to eighty five dollars.24
Applicant’s products sell for approximately twenty
dollars.25 Inasmuch as the goods are relatively
inexpensive, purchasers are less likely to exercise care in
the purchasing process.
Thus, the relatedness of the goods and services,
channels of trade, classes of purchasers and conditions of
sale all favor a finding of likelihood of confusion as to
both applications.

22 Cole Test. pp. 28, 110.

23 Cole Test. p. 62.

24 Cole Test. p. 30.

25 Cole Test. Exh. 72.
Opposition Nos. 91158982 and 91169017
16
Applicant argues that while opposers have taken action
against third parties using marks that contain some form of
the word LUSH, opposers did not take action to prevent
applicant’s other marks LUSCIOUS-LITE and LUSCIOUS BLOOMS
from registering. Opposers counter that applicant’s other
marks create a different commercial impression and that
while they challenge marks that create a similar commercial
impression to the LUSH mark they also encourage competition
in the market place. Reply Br. p. 5. Further, opposers
argue that “[t]he fact that [opposers have] not opposed
certain marks because they connote a different commercial
impression from its LUSH mark – i.e., marks that combine
LUSCIOUS with non-generic terms – is not inconsistent with
[opposers’] right to oppose marks that have the same
commercial impression as its LUSH mark, such as the LUSCIOUS
COSMETICS mark at issue here.” Reply Br. p. 5.
As noted by opposers, “it is entirely reasonable for
the opposer to object to the use of certain marks in use on
some goods which it believes would conflict with the use of
its marks on its goods and services while not objecting to
use of a similar mark on other goods which it does not
believe would conflict with its own use.” McDonald’s Corp.
v. McKinley, 13 USPQ2d 1895, 1899-1900 (TTAB 1989).
Similarly, it is entirely reasonable for opposers to object
to the mark LUSCIOUS combined with a generic term while not
Opposition Nos. 91158982 and 91169017
17
objecting to marks that incorporate the term LUSICOUS with
other matter.
Finally, applicant argues that despite being in the
same “geographical and service areas” since 2004 there have
been no instances of actual confusion. However, there is no
evidence in the record to support a finding that there has
been a meaningful opportunity for confusion to occur. In
fact, the record supports the opposite conclusion inasmuch
as applicant’s use has been limited to nail polish and there
is no evidence of applicant’s “appreciable and continuous
use” of its mark. Gillette Can., Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). In view thereof we consider
this factor to be neutral.
Considering the respective marks in their entireties,
the strength of opposers’ mark, the relatedness of the goods
and services, and the overlap in trade channels and
purchasers, we conclude that the evidence of record as it
pertains to the relevant du Pont factors supports a
likelihood of confusion between opposers’ LUSH mark and
applicant’s LUSCISOUS COSMETICS mark.
Decision: The oppositions are sustained. Application
Serial No. 78143126 will be abandoned and Serial No.
78506882 will proceed only as to the goods listed in
International Class 18.