Origins Natural Resources, Inc.v.One World, Inc.

Trademark Trial and Appeal Board

Sep 24, 1999

No. 91106245 (T.T.A.B. Sep. 24, 1999)

Paper No. 21
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Origins Natural Resources, Inc.
v.
One World, Inc.
_____
Opposition No. 106,245
to application Serial No. 75/040,609
filed on January 5, 1996
_____
Allan Zelnick and Patrick T. Perkins of Fross Zelnick
Lehrman & Zissu for Origins Natural Resources, Inc.
John Cyril Malloy, III and Andrew W. Ransom of Malloy &
Malloy for One World, Inc.
______
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by One World, Inc. to
register the mark shown below
Opposition No. 106,245
2
for “cosmetics, namely skin, medicated and body soaps.”1
Registration has been opposed by Origins Natural
Resources, Inc. under Section 2(d) of the Act. As the basis
of its claim of likelihood of confusion, opposer alleges
that applicant’s mark, if applied to applicant’s goods,
would so resemble opposer’s previously used and registered
ORIGINS marks for a wide variety of products, including
cosmetics such as soap, cleansers, bubble bath and shower
gel, as to be likely to cause confusion. Opposer also
pleaded, under Section 2(a), that applicant’s mark falsely
suggests a connection with opposer.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; testimony taken by each party (with
opposer’s accompanied by related exhibits);2 a testimonial
declaration of opposer submitted pursuant to the parties’
stipulation; and certified copies of opposer’s
registrations, applicant’s responses to opposer’s
interrogatories, and excerpts from printed publications, all

1 Application Serial No. 75/040,609, filed January 5, 1996,
alleging a bona fide intention to use the mark in commerce.
2 Opposer contends that nearly all of applicant’s testimony of
Gina Saati is inadmissible and “must largely be disregarded.”
Suffice it to say, we have read Ms. Saati’s testimony with
opposer’s objections in mind, and have allowed the testimony in,
and have accorded probative weight to it, where appropriate.
Opposition No. 106,245
3
introduced by way of opposer’s notices of reliance. Both
opposer and applicant filed briefs.
According to the testimony of Daria Myers, opposer’s
senior vice president, opposer, a subsidiary of Estee
Lauder, is engaged in the manufacture and sale of cosmetics
and related items. A confidentiality agreement precludes us
from reciting the specific sales and advertising figures.
Suffice it to say, the sales and advertising numbers are
impressive. Opposer’s products are sold nationwide in
approximately 330 department stores and in 28 stores owned
by opposer. Opposer’s products are advertised on radio, and
in magazines, as well as through direct mail campaigns.
Opposer also distributes product guides and catalogs. In
addition, opposer has benefited from unsolicited mention
about its products in articles in publications such as
Family Circle, Self, Instyle and Bazaar.
Applicant took the testimony of Gina Saati, applicant’s
founder and vice president. According to Ms. Saati,
applicant sells a range of products under the mark GINA,
primarily to customers in Caribbean, South American and
other third-world countries. Ms. Saati, whose fanciful
depiction apparently is shown in applicant’s mark, testified
that the involved mark was selected to avoid confusion with
a previously used GINA mark, owned by a third party, for
cosmetics. In this connection, Ms. Saati stated that “we
Opposition No. 106,245
4
decided that we needed a name that was very close to Gina”
and that “when we realized we couldn’t work with the Gina,
we decided we would make Origina and let them [purchasers]
know this is the Original Gina, not the ones those people
are copying, this is the real thing.” (Dep., pp. 11-12.)
With respect to priority of use, opposer’s ownership of
valid and subsisting registrations establishes its priority.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Opposer has made the
following registrations of record: ORIGINS for “retail
clothing and jewelry store services”; “jewelry”; “clothing,
namely dresses, sweaters, coats, pants, long dresses,
stoles, neckwear, scarves, hats, skirts, blouses, ponchos,
shawls, kimonos and sarongs”; “body lotions, skin cleansing
creams and facial moisturizing creams, sold in applicant’s
own store and through applicant’s catalogs”; “stationery,
greeting cards, wrapping paper and scented lining paper”;
“face make-up, face powder, lipstick, blusher, mascara, eye
make-up pencils, eye shadow, face and body moisturizers,
cleansers, soap for personal use, bubble bath, shower gel,
bath salt, bath oils, bath powder, suntanning and suncare
preparations, personal deodorants, breath-freshener, skin
treatment cleanser, creams and lotion”; “books in the fields
of Native American culture, the American southwest, India
and Indian spirituality, health and cooking”; “retail store
Opposition No. 106,245
5
services for the sale of scented lining paper, wrapping
paper, greeting cards, stationery, hat boxes, umbrellas,
nail brushes, body brushes, soap dishes, body washing mitts,
shoe sachets, candles, rubber stamp pads and ink pads,
pocketbooks, backpacks, makeup bags, books, cooking herbs,
flavored honey syrups, hard candy, magazines, compact discs,
cassettes, video cassettes, table coasters to protect
furniture, agenda calendars, crayons, pencils, hair brushes,
body massage brushes, [and] scented linen liners”; “bed
linens, bed spreads, duvet covers, table linens, table
cloths not of paper, textile wall hangings, textile napkins,
textile placemats, embroidery, textile floor mats [and]
rugs”; “musical sound recordings, namely compact discs,
audio cassettes and phonograph records”; “pencil holders,
mirrors, picture frames, wood carvings, wooden boxes,
furniture, namely wall shelves, candle holders not of
precious metal, baskets of straw, leather, woven metal bands
and wire, bowls, decorative vessels, and textile wall
hangings, primarily made from cloth, beads, and other
fibers”; and the mark shown below
Opposition No. 106,245
6
for “moisturizers and sunscreen preparations.”
Our 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. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. Federated Food, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Insofar as the goods are concerned, although opposer
markets a wide range of products and services, some of which
are entirely unrelated to applicant’s goods, opposer’s
products include body soap and other cosmetics. Applicant’s
goods are identified as “cosmetics, namely skin, medicated
and body soaps.” Thus, the parties’ goods, at least in
part, are legally identical, and are otherwise related to
the extent that both parties’ goods include cosmetics. We
presume that the parties’ soaps are relatively inexpensive,
and may be the subjects of impulse purchases. The goods
would travel in the same channels of trade to the same
classes of purchasers.
We next turn to a comparison of the marks which, for
us, is a critical factor in deciding this case. The
Opposition No. 106,245
7
involved marks must be considered in their entireties. When
so considered, it is our view that the marks are very
different in terms of sound, appearance, meaning and overall
commercial impression. The terms ORIGINS and ORI-GINA sound
and look different. In any event, the term ORI-GINA in
applicant’s mark is accompanied by a pictorial
representation of a woman’s face. This design feature is
quite prominent in applicant’s mark and, coupled with the
literal feature, clearly gives the mark a different meaning
and overall commercial impression from opposer’s word mark.
Applicant’s mark conjures up the image of a woman whose
name is “Gina,” and, in applicant’s case, who is the
“original Gina.” This commercial impression is to be
contrasted with the one engendered by the commonly
understood term “ORIGINS.” As Ms. Myers testified in
explaining why the term was selected for opposer’s mark:
“The concept behind Origins is the return to basics, going
back to nature and plant materials for our product
formulations and for simplicity and basically going back to
our origins.” (Dep., pp. 6-7.)
Opposer also has introduced, pursuant to stipulation,
the declaration of Ms. Myers which is accompanied by two
exhibits. One is a “face chart,” showing a pictorial
representation of the face of a woman, which is used to
demonstrate potential cosmetics regimens for customers. The
Opposition No. 106,245
8
other exhibit is a product brochure which shows the actual
face of a man. Opposer argues that its “mark has, on
occasion, appeared in connection with a woman’s, as well as
a man’s face” and that “[c]onsumers are likely to believe
that applicant’s mark is another instance of [opposer]
presenting one of its marks in connection with a woman’s
face.” (Brief, p. 12.) This argument hardly is persuasive
of a different result when we compare opposer’s mark with
the mark sought to be registered. The faces used by opposer
certainly are not trademarks and, moreover, are not included
in any of its marks.
Opposer also argues that the design element of
applicant’s mark has no source identifying function, and
that any mention of applicant’s cosmetics in articles or
editorials in fashion magazines would not include the design
element, but rather only ORI-GINA. Opposer is ignoring the
fact, however, that applicant is not attempting to register
the literal portion only; the mark includes the woman’s face
design portion which, of course, we must consider in our
comparison of the marks.
Opposer further contends that its mark is “famous” and
“strong.” Indeed, the record reveals that opposer has
enjoyed success with the products sold under the mark
ORIGINS. Further, the record is devoid of evidence of any
third-party uses or registrations of similar marks for
Opposition No. 106,245
9
cosmetic products. Although we are willing to accept the
claim that opposer’s mark is strong in the trade, we do not
accord, however, the status of “famous mark” to the mark
ORIGINS. Cf.: Kenner Parker Toys v. Rose Art Industries,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
In sum, we find that the marks, when considered in
their entireties, are very different in overall commercial
impressions such that, even when the marks are applied to
identical products, confusion is unlikely to occur in the
marketplace.
Finding no likelihood of confusion, we now turn to
opposer’s claim that applicant’s mark falsely suggests a
connection with opposer as contemplated by Section 2(a) of
the Act. In order to prevail, opposer must show that the
mark sought to be registered is the same or a close
approximation of its previously used name or identity. It
must also be shown that the person identified by the mark is
not connected with the goods for which the mark is sought to
be registered. Opposer must also show that the fame or
reputation of its name or identity is sufficient that a
connection with opposer would be presumed when applicant’s
mark is used on its goods. In re North American Free Trade
Association, 43 USPQ2d 1282, 1284 (TTAB 1997), citing In re
Cotter & Co., 228 USPQ 202, 204 (TTAB 1985). See also: The
University of Notre Dame du Lac v. J. C. Gourmet Food
Opposition No. 106,245
10
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
In the present litigation, opposer has devoted the bulk
of its efforts, both at trial and in its brief, to the
likelihood of confusion claim. We likewise see no reason to
dwell on the Section 2(a) claim inasmuch as it clearly falls
short. Simply put, the claim fails because we find that
applicant’s mark is not the same as or even a close
approximation of opposer’s name or identity. As set forth
in more detail above, there are significant differences
between opposer’s name or identity (which is also opposer’s
mark), ORIGINS, and applicant’s mark ORI-GINA and design.
Decision: The opposition is dismissed.
T. J. Quinn
D. E. Bucher
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board