Mana Products, Inc.v.Black Onyx, Inc.

Trademark Trial and Appeal Board

Aug 15, 2001

No. 91112190 (T.T.A.B. Aug. 15, 2001)

8/15/01 Paper No. 25
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mana Products, Inc.
v.
Black Onyx, Inc.
_____

Opposition No. 112,190
to application Serial No. 75/330,735
filed on July 25, 1997
_____

A. Thomas Kammer and R. Glenn Schroeder of Hoffmann & Baron, LLP for
Mana Products, Inc.

John H. Oltman and Frank L. Kubler of Oltman, Flynn & Kubler for Black Onyx,
Inc.
______

Before Simms, Bottorff and Drost, Administrative Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Black Onyx, Inc., applicant herein, seeks registration on the Principal
Register of the mark depicted below for goods identified in the application as
“skin conditioner and shaving lotion, both of which eliminate skin bumps.”1[1]

1[1] Serial No. 75/330,735, filed July 25, 1997. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a); October 1, 1984 is alleged as the date of first
use of the mark anywhere, and November 1995 is alleged as the
date of the first use of the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Mana Products, Inc. has opposed registration of applicant’s mark, alleging
as grounds therefor that applicant’s mark, as applied to applicant’s goods, so
resembles opposer’s mark BLACK OPAL as to be likely to cause confusion, to
cause mistake, or to deceive, and that it thus is barred from registration under
Trademark Act Section 2(d), 15 U.S.C. §1052(d). More particularly, opposer
alleges prior use of its BLACK OPAL mark on various cosmetic and skin care
products including pre-shave daily cleansers, desensitizing clear shave gels,
after-shave relief lotions and razor bump recovery solutions, all marketed for the
care and treatment of razor bumps, particularly to African-American men.
Opposer also has pleaded ownership of Registration No. 1,949,678, which is of
the mark BLACK OPAL, in typed form, for goods which include pre-shave
cleansers, shave gels, after-shave lotions, and razor bump treatment gels.2[2]
Applicant answered the notice of opposition by denying the essential
allegations thereof, by arguing that the parties’ respective marks are not

2[2] Registration No. 1,949,678 issued on January 16, 1996. The
goods identified in the registration also include skin
retexturizing lotions, knee and elbow moisturizers, sunscreens,
eyeshadows, blushes, foundation liquids, foundation cremes,
foundation powders, face powders, lipsticks, eye pencils, lip
pencils and mascara.
confusingly similar, and by alleging that priority rests with applicant, not
opposer.3[3]
The record in this case consists of the pleadings; the file of the opposed
application; status and title copies of three registrations owned by opposer,
submitted by opposer via notice of reliance;4[4] encyclopedia entries for “opal”

3[3] Applicant’s allegation of priority constitutes an attack on
the validity of opposer’s pleaded registration which will not be
heard in the absence of a counterclaim for cancellation of that
registration. See Trademark Rule 2.106(b)(2), 37 CFR
§2.106(b)(2). Applicant has not filed any such counterclaim.
Accordingly, applicant’s arguments with respect to priority are
irrelevant and have been given no consideration. As noted infra
at page 7, priority is not an issue in this case because opposer
has made its pleaded registration of record.

4[4] Only one of the three registrations made of record by opposer
was pleaded in the notice of opposition, i.e., Registration No.
1,949,678. See supra at footnote 2. The other two registrations
are: Registration No. 1,825,722, issued March 8, 1994, which is
of the mark BLACK OPAL (in typed form) for “skin care products;
namely, cleansers, toners, and moisturizing lotions; and facial
treatment products; namely, beauty masks, blemish control gel and
skin bleaching preparations”; and Registration No. 2,024,917,
issued December 24, 1996, which is of the mark BLACK OPAL (in
stylized form as depicted below)

for “skin care products, namely cleansers, toners, moisturizing
lotions, and sunscreens; facial treatment products, namely beauty
masks, blemish control gel, skin bleaching preparations and skin
retexturizing lotions; eyeshadows, blushes, foundation liquids,
foundation cremes, foundation powders, face powders, lipsticks,
eye pencils, lip pencils and mascara.” Applicant did not object
to opposer’s introduction of these unpleaded registrations by
notice of reliance, nor to opposer’s witness’s testimony
regarding opposer’s use of these registered marks (see Garment
depo. at 4-8 and at Exhibit Nos. 1-2). In view thereof, and
and “onyx,” submitted by opposer via notice of reliance; the testimony
deposition of Sharon Garment, opposer’s Vice-President of Marketing, and
exhibits thereto; and the testimony deposition of Eddie Collins, applicant’s
president, and the exhibits thereto, many of which are the subject of a motion to
strike by opposer. The case has been fully briefed, but no oral hearing was
requested.
We turn first to opposer’s motion to strike certain of the exhibits to the
testimony deposition of applicant’s president, Eddie Collins, i.e., Exhibit Nos. 1-
6, 8 and 10-15.5[5] Opposer contends that these exhibits consist of documents
which should have been produced by applicant in response to opposer’s
discovery requests, but were not.6[6] Applicant, for its part, argues that its failure
to produce these documents during discovery is excusable due to the serious

because applicant clearly was apprised that opposer was offering
evidence of these registrations in support of its Section 2(d)
claim, we find that applicant has impliedly consented to the
trial of the issues raised by these unpleaded registrations, and
we deem the notice of opposition to be amended to include those
registrations. See Fed. R. Civ. P. 15(b); 37 CFR §2.107; and
TBMP §507.03(b).

5[5] Opposer’s motion to strike was filed on April 12, 2000. By
order dated January 30, 2001, the Board deferred consideration of
opposer’s motion until final hearing. Cf. TBMP §718.03(c).
Pursuant to the Board’s instructions, opposer and applicant, in
their briefs on the case, have renewed their respective arguments
with respect to the motion to strike.

6[6] Opposer excepts from its motion to strike certain documents
included in applicant’s Exhibit 8, which applicant in fact had
produced during discovery. Those documents are applicant’s
invoice numbers 55448, 55422, 55423, 55420, 55435, 55412, 05053,
05097 and 55411.
illness and hospitalization of Mr. Collins, applicant’s president, and that the
documents therefore should not be stricken.
A party which fails to produce documents or information in response to
its opponent’s proper discovery requests will be precluded from introducing or
relying on such documents or information at trial. See Johnston Pump/General
Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1677 (TTAB 1989); and
National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 3
USPQ2d 1671, 1672 n.3 (TTAB 1987). We find that, with the exception of a few
documents included in applicant’s Exhibit 8, see supra at footnote 6, the
documents in applicant’s Exhibit Nos. 1-6, 8 and 10-15 are responsive to
opposer’s discovery requests and that they accordingly should have been
produced during discovery, but were not. Applicant has not contended
otherwise.
Mr. Collins’ December 1997 illness and hospitalization, which occurred
some nine months prior to the institution of this proceeding and some twenty
months prior to the close of the discovery period, do not excuse applicant’s
failure to produce these documents to opposer prior to trial. Applicant clearly
was able to produce some documents in response to opposer’s discovery
requests; it has not explained why it could not and did not produce all of the
requested documents, either initially or by supplementation as required by Fed.
R. Civ. P. 26(e), nor has it explained why it did not move to extend its time to
respond to the discovery requests, if such extension of time was necessary.
In view of applicant’s failure to produce the documents at issue during
discovery, applicant is not entitled to rely on those documents at trial. See
Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra, and National
Aeronautics and Space Administration v. Bully Hill Vineyards Inc., supra.7[7]
Accordingly, we hereby strike and shall give no consideration to Exhibits 1-6, 8
and 10-15 to the testimony deposition of Eddie Collins, except for those
documents in Exhibit 8 identified supra at footnote 6.8[8]
We turn next to the merits of opposer’s Section 2(d) ground of opposition
to registration of applicant’s BLACK ONYX (and design) mark. Opposer has
made of record status and title copies of its pleaded Registration No. 1,949,678 of
the mark BLACK OPAL. (Opposer’s Notice of Reliance, filed November 8, 1999.)
In view thereof, and because opposer’s likelihood of confusion claim based
thereon is not frivolous, we find that opposer has standing to oppose registration
of applicant’s mark. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). Moreover, inasmuch as opposer’s pleaded
registration is not the subject of a counterclaim or a separate petition to cancel by

7[7] Hewlett-Packard v. Human Performance Measurement, Inc., 23
USPQ2d 1390 (TTAB 1992), cited by applicant, involved the
untimely service of a testimony deposition transcript, not the
failure to provide discovery. It thus is inapposite to the
present case.

8[8] The stricken evidence was offered by applicant in support of
its legally irrelevant priority claim. See discussion infra at
page 7. Accordingly, even if the evidence had not been stricken,
our decision in this case would have been the same.

applicant, priority under Section 2(d) is not an issue in this case. See King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
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
bearing on the likelihood of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the evidence of
record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Applicant has conceded that the goods identified in its application, “skin
conditioner and shaving lotion, both of which eliminate skin bumps,” are similar
to the “pre-shave cleansers, shave gels, after-shave lotions, razor bump treatment
gels” identified in opposer’s pleaded Registration No. 1,949,678. (Applicant’s
Brief at 5.) Indeed, we find that the parties’ respective goods are essentially
identical. This factor weighs in favor of finding of likelihood of confusion.
There are no limitations or restrictions as to trade channels or classes of
purchasers in either applicant’s or opposer’s identification of goods, so we must
presume that the parties’ respective goods are sold in all normal trade channels
and to all normal classes of purchasers for such goods, regardless of what the
evidence might show the parties’ actual trade channels and classes of customers
to be. See, e.g., Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Because the parties’ respective goods,
as identified in the application and the registration, are identical or highly
similar, we find that they are or could be marketed in the same trade channels
and to the same classes of prospective purchasers. This factor weighs in favor of
a finding of likelihood of confusion.
Applicant concedes that the parties’ respective goods are inexpensive
items which are purchased primarily on impulse rather than after careful
deliberation. (Applicant’s Brief at 7.) This factor weighs in favor of a finding of
likelihood of confusion.
Opposer argues that its mark is a famous mark which is entitled to a
relatively broad scope of protection. We find that the evidence of record does
not support that contention. Opposer’s sales and advertising figures (which
have been submitted under seal pursuant to the parties’ protective agreement)
are not so large as to qualify opposer’s mark as a “famous” mark within the
meaning of the fifth du Pont likelihood of confusion factor. Moreover, there is no
evidence as to opposer’s share of the relevant market. The burden of proving
fame is on opposer, and we find that opposer has failed to carry that burden.
Therefore, we find that this likelihood of confusion factor is neutral in this case.
There is no evidence of record of any similar marks in use on similar
goods. Applicant, in its brief, has identified an alleged third-party registration
and several alleged pending intent-to-use applications. However, the
registration and applications were not made of record during applicant’s
testimony period, and they accordingly can be given no consideration. See TBMP
§706.02. Moreover, even if they had been properly made of record, they would
not constitute evidence that the marks depicted therein are in use or that the
relevant public is familiar with them,9[9] and they thus are of no probative value
in our likelihood of confusion analysis. See, e.g., Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). We find that the
absence of any evidence of similar marks in use on similar goods belies
applicant’s contention that opposer’s mark is weak or entitled to a narrowed
scope of protection. This factor weighs in favor of a finding of likelihood of
confusion in this case.
Opposer acknowledges that it is unaware of any instances of actual
confusion between its mark and applicant’s mark. However, we reject
applicant’s contention that this absence of actual confusion is weighty evidence
against a finding of likelihood of confusion in this case. It is clear from
applicant’s own assertions regarding the differences in the parties’ respective
actual trade channels, and from the extremely limited nature and amount of
applicant’s sales and advertising, that there has been no meaningful opportunity
for actual confusion to have occurred. Therefore, the absence of evidence of
actual confusion is entitled to no significant weight in this case. See Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).

9[9] This is especially so with respect to the third-party intent-
to-use applications identified by applicant.
Finally, we turn to a determination of whether applicant’s mark and
opposer’s mark, when compared in their entireties in terms of appearance, sound
and connotation, are similar or dissimilar in their overall commercial
impressions. 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 terms of their overall commercial impression that
confusion as to the source of the goods offered under the respective marks is
likely to result. 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). Furthermore,
although the marks at issue must be considered in their entireties, it is well-
settled that one feature of a mark may be more significant than another, and it is
not improper to give more weight to this dominant feature in determining the
commercial impression created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, where, as in the present case,
the marks would appear on virtually identical goods, the degree of similarity
between the marks which is necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ 1698 (Fed. Cir. 1992).
Comparing applicant’s mark and opposer’s mark in their entireties, we
find that although the marks are not identical, they are more similar than

dissimilar. The only points of distinction between the two marks are applicant’s
use of a background carrier design, and applicant’s use of the word ONYX
instead of the word OPAL as the second word of its mark. Those specific
differences between the marks are insufficient to render the marks dissimilar in
their entireties.
The dominant feature in the commercial impression created by applicant’s
mark is its wording, BLACK ONYX. It is that wording, and not the simple
bisected circle design which serves merely as a background or carrier for the
wording, which is likely to be recalled by purchasers in calling for the goods. See
generally In re Appetito Provisions Co.., Inc. 3 USPQ2d 1553 (TTAB 1987).
Moreover, opposer’s mark in Registration No. 1,949,678 is registered in typed
form, such that opposer would be free to display its mark in all reasonable
manners, including with a similar basic carrier device. See Squirtco v. Tomy
Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). In fact, the record
shows that opposer has displayed its BLACK OPAL mark with such a circular
carrier device on its men’s product line (see, e.g., Garment depo., at Exhibit Nos.
37-39), and has registered the mark with a oval carrier design in connection with
its women’s product line (Registration No. 2,024,917; see supra at footnote 4). For
these reasons, we find that the design feature in applicant’s mark is entitled to
relatively little weight in our comparison of the respective marks. See In re
National Data Corp., supra.
Comparing the literal portions of the respective marks, we find that
BLACK OPAL and BLACK ONYX are similar in terms of appearance and sound,
and highly similar in terms of connotation. Both marks begin with the word
BLACK, followed by a short four-letter word beginning with the letter “O.”
Although OPAL and ONYX are somewhat dissimilar in terms of appearance and
sound, those dissimilarities are outweighed by the words’ similarity in
connotation, i.e., that of a gemstone. In their entireties, BLACK OPAL and
BLACK ONYX have identical connotations, i.e., that of a “black gemstone.” That
connotation is arbitrary and strong as applied to these goods; as noted above,
there is no evidence that any third parties use similar “gemstone” marks, much
less “black gemstone” marks, on these types of goods.10[10] Purchasers, in
recalling the marks, are likely to retain the general impression of “black
gemstone,” and perhaps not so likely to recall the particular gemstones named in
each of the marks. Moreover, even if they are able to recall the difference in
particular gemstones, the strength and arbitrariness of the “black gemstone”
connotation is likely to lead them to mistakenly assume that BLACK OPAL and
BLACK ONYX products originate from the same source.

10[10] For this reason, Claremont Polychemical Corp. v. Atlantic
Powdered Metals, Inc., 176 USPQ 207 (CCPA 1972), asserted by
applicant to be “directly on point,” is in fact readily
distinguishable from the present case. The marks involved in
that case, i.e., EVERGOLD and DURAGOLD, were found to be not
confusingly similar because they both were weak, highly
suggestive marks as applied to the relevant goods. There is
nothing in the record from which we can conclude that opposer’s
BLACK OPAL mark is similarly weak or otherwise entitled to a
narrow scope of protection.
In short, although applicant’s mark is not identical to the cited registered
mark, we find that the marks in their entireties are sufficiently similar that
confusion is likely to result when they are used on the identical and/or closely
related goods involved in this case.
Having carefully considered the evidence of record with respect to each of
the relevant du Pont evidentiary factors, we conclude that confusion is likely to
result from applicant’s use of its mark on its identified goods. To the extent that
applicant, by its evidence or arguments, may have raised any doubt as to that
conclusion, such doubt must be resolved against applicant and in favor of the
prior registrant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289 (Fed. Cir. 1984).

Decision: The opposition is sustained.