Palmiotto Enterprises, LLCv.Brown Bag Massage, LLC

Trademark Trial and Appeal BoardApr 27, 2009

No. 91179790 (T.T.A.B. Apr. 27, 2009)

Mailed: 4/27/09 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Palmiotto Enterprises, LLC v. Brown Bag Massage, LLC _____ Opposition No. 91179790 to application Serial No. 77074114 filed on January 2, 2007 _____ Nicholas D. Myers of Burkhalter Kessler Goodman & George for Palmiotto Enterprises, LLC. April Massie for Brown Bag Massage, LLC, pro se. ______ Before Quinn, Walters and Bucher, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Brown Bag Massage, LLC filed an application to register the mark BROWN BAG MASSAGE (“MASSAGE” disclaimed)(in standard characters) for “massage” (in International Class 44).1 Palmiotto Enterprises, LLC opposed registration on the ground that applicant’s mark, when used in connection with 1 Application Serial No. 77074114, filed January 2, 2007, alleging first use anywhere and first use in commerce on April 1, 2006. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91179790 2 applicant’s services, so resembles the previously used and registered marks BROWN BAG PARTY (“PARTY” disclaimed)(in standard characters)2 and WHAT’S IN YOUR BROWN BAG? (in standard characters)3 for online retail store services and retail shop-at-home party services featuring adult toys, novelties and personal products of primarily an erotic, sensual or sexual nature, including both general use and adult massagers and massage oil, as to be likely to cause confusion. Applicant, in its answer, denied the salient allegations of likelihood of confusion. The record consists of the pleadings; the file of the involved application; trial testimony, with related exhibits, taken by opposer; and opposer’s pleaded registrations introduced by way of the parties’ stipulation. Applicant did not take testimony or introduce any other evidence. Both parties filed briefs.4 Opposer has used its pleaded marks since March 2005, 2 Registration No. 3103236, issued June 13, 2006. 3 Registration No. 3173954, issued November 21, 2006. 4 The Board, in an order dated March 27, 2009, denied opposer’s motion to strike applicant’s main brief at final hearing. However, so as to be clear, factual statements made in a party’s brief on the case can be given no consideration unless they are supported by evidence properly introduced at trial. Thus, for example, we cannot consider applicant’s references to third-party registrations of BROWN BAG marks or to the number of applicant’s customers. Simply put, these factual statements are not supported by any evidence of record. See, e.g., Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992). See also TBMP §704.06(b) (2d ed. rev. 2004). Opposition No. 91179790 3 continuously selling products through its website and shop- at-home parties. Opposer identified its four major product categories as follows: massage products; lingerie; bachelorette party supplies; and adult products. According to Peter Palmiottos, opposer’s chief executive officer and president, opposer’s shop-at-home parties are similar to Tupperware parties. (Palmiotto dep., p. 13). Opposer has over 800 independent contractors located in forty states (including twenty-seven contractors in applicant’s home state of Ohio) to manage the shop-at-home parties. Opposer roughly estimates its customer base at 20,000-50,000 people. Retail sales range from $200,000 in 2005 to estimated sales of $6 million in 2008. Opposer promotes its goods and services through catalogs and flyers, as well as collateral merchandise such as shirts, hats and pens. The record does not include any information about applicant or its business activities under the applied-for mark. Opposer has established its standing to oppose registration of the involved application. In particular, opposer’s pleaded registrations are properly of record. Opposer’s registrations of the marks BROWN BAG PARTY and WHAT’S IN YOUR BROWN BAG? cover on-line retail store services and retail shop-at-home party services, featuring adult toys, novelties, personal products of primarily an Opposition No. 91179790 4 erotic, sensual, or sexual nature, namely lingerie, sleepwear, swimwear, bras, panties, pasties, temporary tattoos, boxer shorts, pants, exercise clothing, tank tops, perfume, candles, incense, books, candy, and games. Opposer’s use and registrations of its marks establish that opposer has standing, that is, it is not a mere intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). In view of opposer’s ownership of valid and subsisting registrations, there is no issue regarding opposer’s priority for the services recited in its registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Further, Mr. Palmiotto’s testimony establishes that opposer first used its marks in connection with massagers and massage oils prior to the filing date of the involved application.5 Thus, the only issue to decide herein is likelihood of confusion.6 5 Because applicant did not introduce any testimony or other evidence, applicant is limited to the filing date of its application as the earliest date upon which it may rely for purposes of priority. See Benjamin J. Giersch v. Scripps Network, Inc., 90 USPQ2d 1020, 1022-1023 (TTAB 2009) 6 Although opposer identified dilution as an issue in this case (Brief, p. 1), no further mention is made of this claim. Accordingly, and inasmuch as opposer concedes that its marks are not famous, no consideration will be given to any dilution claim. Opposition No. 91179790 5 Our 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. 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. The relevant du Pont factors in the proceeding now before us are discussed below. With respect to the involved marks, we examine the similarities and dissimilarities of the marks in their appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. 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 their entireties that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general Opposition No. 91179790 6 rather than a specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing applicant’s mark BROWN BAG MASSAGE to registrant’s marks BROWN BAG PARTY and WHAT’S IN YOUR BROWN BAG?, the marks obviously share the identical term “BROWN BAG.” 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”) For example, merely descriptive matter that is disclaimed is accorded subordinate status relative to the more distinctive portions of a mark. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Applicant has disclaimed the generic term “MASSAGE” while registrant has disclaimed the generic term “PARTY” in one of its marks. Further, in opposer’s other mark, the words “WHAT’S IN YOUR” are not sufficient to distinguish this mark from applicant’s mark. The identical term, “BROWN BAG,” in each mark is most likely to be Opposition No. 91179790 7 impressed upon the mind of a purchaser and will be remembered and used when calling for the goods and/or services. See Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). In sum, the marks BROWN BAG MASSAGE, BROWN BAG PARTY and WHAT’S IN YOUR BROWN BAG? are similar in sound, appearance, meaning (suggesting inexpensiveness and/or privacy) and overall commercial impression. The marks, if used in connection with related goods and/or services, would be likely to confuse consumers as to source or origin. The first du Pont factor weighs in favor of a finding of likelihood of confusion. We next turn to consider the second du Pont factor involving the similarity/dissimilarity between the goods and/or services. It is well established that the goods and/or services of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods and/or services of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and/or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same Opposition No. 91179790 8 source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would confuse the goods and/or services, but rather whether there is a likelihood of confusion as to the source of the goods and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Opposer’s catalogs include a section captioned “MASSAGE” showing for sale a variety of massagers and massage oils, as well as instructional materials relating to massage. The products include general use massagers for a person’s back, feet, legs and scalp, as well as erotic massagers. Opposer also sells various massage oils, including “anti-stress massage oil,” “aromatherapy massage oil,” “sensuous massage oil” and “erotica creamy oils.” Materials relating to massage include a book and DVD titled “Erotic Massage The Touch of Love.” Several of the massagers and massage oils bear the mark BROWN BAG PARTY. (Palmiotto dep., pp. 34-35). Mr. Palmiotto estimated that forty percent of opposer’s product sales comprise massage products. We find that opposer’s general use massagers and massage oils are products that a masseur or masseuse might use while giving a massage; thus, these products are related Opposition No. 91179790 9 to applicant’s massage services. Although we appreciate applicant’s contention that its massage services would not be confused with the type of massage for which a significant portion of opposer’s erotic adult products are directed, it is unpersuasive. As shown by the catalog listings, several of opposer’s massage products would not be characterized as being strictly adult or erotic in nature. Accordingly, we find that opposer’s general use massage products and its online retail store services and retail shop-at-home party services featuring such products to be related to applicant’s massage services. This second du Pont factor weighs in favor of a finding of likelihood of confusion. In view of the above, we must presume that applicant’s services and opposer’s goods and services are rendered in identical trade channels and are purchased by the same consumers. The purchasers comprise the general public, and these ordinary consumers would use nothing more than ordinary care in making their purchasing decisions. Further, the nature and type of goods and services identified herein, with no price points attached, dictate that purchases may be made on impulse. These factors weigh in favor of a finding of likelihood of confusion. Lastly, opposer contends that applicant failed to exercise due diligence in the selection and adoption of its Opposition No. 91179790 10 mark. Opposer states that “the failure to conduct a proper trademark search must count against Applicant.” Suffice it to say, we do not find that the record supports a finding of bad faith adoption or that applicant’s selection of its mark should somehow count against applicant in our analysis. Nevertheless, lack of intent to trade on another’s mark will not prevent a finding of likelihood of confusion when the involved marks are likely to cause confusion. Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1640 (TTAB 1988). The du Pont factors under consideration in this case weigh in favor of a finding of likelihood of confusion. Decision: The opposition is sustained on the ground of likelihood of confusion, and registration to applicant is refused.