Parfums de Coeur, Ltd.v.Colorado Medical Center, P. C.

Trademark Trial and Appeal Board

Oct 27, 1999

No. 91101936 (T.T.A.B. Oct. 27, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/27/99
PWC
Opposition No. 101,936
Parfums De Coeur, Ltd.
v.
Colorado Medical Center,
P.C.
Before Hanak, Quinn, and Walters,
Administrative Trademark Judges.
By the Board:
Parfums De Coeur, Ltd. (“opposer”) has opposed the
application of Colorado Medical Center, P.C. (“applicant”)
to register the mark LE COEUR for “skin and hair care
preparations; perfume and cologne; hair lotions;
moisturizing lotions; skin soaps; essential oils for use in
manufacturing cosmetics and perfume; cosmetics, namely
foundation makeup, blushes, eyeliner, and skin cream.”1 As
grounds for the opposition, opposer contends that it is
engaged in the manufacture, advertising and distribution of
perfumes, colognes, dusting powders, lotions and body
sprays; that since September 17, 1981, it has continuously

1 Application Serial No. 74/665,541, filed on April 25, 1995,
based on applicant’s bona fide intent to use the mark in
commerce. Applicant did not file an amendment to allege use
prior to publication of the mark.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 101,936
2
used the mark PARFUMS DE COEUR on its goods in interstate
commerce; that it owns two incontestable registrations:
Registration No. 1,650,533, for the mark shown below for
“perfumes and cologne”;2 and Registration No. 1,653,415, for
the mark PARFUMS DE COEUR in typed form for “perfumes and
cologne”;3 that applicant’s mark, LE COEUR, is highly
similar to its registered marks; that the parties’ asserted
marks will be used on identical goods which will be sold in
the same channels of trade to identical classes of
purchasers; and that a likelihood of confusion exists under
Trademark Act Section 2(d) between its previously used and
registered marks and the mark in the application at issue.
Applicant, in its answer, denies the salient
allegations of the notice of opposition, except that it
admits that “Opposer has used the ‘Parfums De Coeur’ mark in
connection with perfumes, colognes, and/or body sprays,” and

2 Registration No. 1,650,533, issued July 16, 1991 with a
disclaimer of “PARFUMS,” reciting November 4, 1981 as a date of
first use in commerce on the goods. Section 8 affidavit
accepted, Section 15 affidavit filed.
3 Registration No. 1,653,415, issued August 13, 1991 with a
disclaimer of “PARFUMS,” reciting November 4, 1991 as a date of
first use in commerce on the goods. Section 8 affidavit
accepted, Section 15 affidavit filed.
Opposition No. 101,936
3
that “the public and retail trade has come to recognize the
‘Parfums De Coeur’ mark as a ‘designer knockoff’ or
‘knockoff perfume’ or ‘designer imposter.’”
This case now comes before the Board for consideration
of opposer’s motion for summary judgment on the ground of
likelihood of confusion under Trademark Act Section 2(d).
The motion is fully briefed.4
In support of its motion for summary judgment, opposer
essentially argues that applicant’s mark, LE COEUR, is
highly similar to its pleaded marks; that applicant’s goods
are identical in part to those identified by the marks in
opposer’s asserted registrations; that opposer’s marks have
achieved widespread recognition as the source of high
quality, lower cost fragrances; that opposer has established
priority of use inasmuch as both of its incontestable
registrations pre-date applicant’s intent-to use
application; that the goods in the pleaded registrations and
involved application will be available in the same channels
of trade to the same classes of purchasers; that both
parties’ goods are inexpensive, “impulse” items receiving a
lower degree of consumer care in their selection; and that

4 Opposer’s consented motion to file a reply brief is granted. In
this case, we have considered opposer’s reply brief because it
clarifies the issues and aids us in coming to a just decision on
the motion. See Trademark Rule 2.127(a).
Opposition No. 101,936
4
applicant may have intended “to consciously imitate
Opposer’s mark.”
Opposer has submitted the affidavits of its president,
Mark A. Laracy, and one of its attorneys, Marni J. Beck;
certified copies of its pleaded registrations; examples of
media articles featuring opposer and its products; printed
and videotaped copies of its advertisements; samples of its
product packaging; portions of the record in this
proceeding; and applicant’s answers to opposer’s first set
of interrogatories and document requests.
In response to the motion for summary judgment,
applicant maintains that there are disputed material facts
relative to the character and prices of the respective
goods, the channels of trade and distribution, the character
of the purchasers and applicant’s intent in adopting its
mark, which should preclude the granting of summary
judgment. More specifically, applicant argues that
opposer’s goods are “designer knock-off” fragrances ranging
in price from $1.95 to $7.95 and distributed through chain
drugstores and mass merchandisers, while applicant’s goods
will be designer fragrances ranging in price from $20 to $50
and marketed through mail order or high end retail outlets;
that evidence submitted by opposer indicates that consumers
of its goods are “totally different” from consumers of
designer fragrances; that due to the sophistication of the
Opposition No. 101,936
5
purchasers, differences in price, and different channels of
trade, likelihood of confusion between the goods is small;
and that applicant had no prior knowledge of opposer’s marks
and did not intend to adopt a confusingly similar mark.
In support of its position, applicant has submitted the
affidavit of its attorney and vice president, Thomas H.
Swineheart; a copy of a trademark search preformed by
applicant; and a price list regarding additional goods
offered by applicant under different marks from the one at
issue in this proceeding.
In reply, opposer submits the affidavit of its
president, Mark A. Laracy, asserting that because applicant
does not argue the differences between its mark and those of
opposer, applicant effectively concedes the similarity
thereof; and that because the goods as identified in the
application at issue are not limited as to price, channels
of trade, or classes of purchasers, applicant’s arguments
regarding such limitations are immaterial.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The party moving for summary judgment has
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Opposition No. 101,936
6
Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, supra.
Preliminarily we note that priority of use is not at
issue in this proceeding inasmuch as opposer has pleaded
ownership of Registration Nos. 1,650,533 and 1,653,415 and
introduced status and title copies thereof, and because
applicant has not filed a counterclaim for cancellation of
those registrations. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 182 USPQ 108 (CCPA 1974).
Turning to the statutory grounds of likelihood of
confusion in determining the issue thereof, and hence
whether there is any genuine issue of material fact relating
thereto, we must consider all of the probative facts in
evidence which are relevant to the factors bearing on
Opposition No. 101,936
7
likelihood of confusion, as identified in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). As noted in the du Pont decision itself, each of the
factors may from case to case play a dominant role. Indeed,
our principal reviewing court and this Board frequently have
held, in appropriate cases, that a single du Pont factor may
be dispositive of the likelihood of confusion analysis.
See, for example, Kellogg Co. v. Pack ‘Em Enterprises Inc.,
14 USPQ2d 1545 (TTAB 1990), aff’d. 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991). The factors to which we have
probative evidence are discussed below.
After a careful review of the record in this case, we
find that there are no genuine issues of material fact
relating to those factors.
Turning first to the relatedness of the parties’ goods,
the likelihood of confusion analysis is based upon the goods
as identified in the involved application and registrations.
See, for example, Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). Moreover,
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.
Opposition No. 101,936
8
See Octocom Systems Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Herein,
opposer’s goods, identified as perfumes and cologne, are
included among the goods identified in the application at
issue. Applicant’s goods are thus identical in part to
those of opposer. As such, applicant’s contention that the
parties’ goods differ is not well taken. In contending that
opposer’s product is less expensive, sold primarily in
drugstores and costing between $2-8 while applicant’s are
intended to be sold in high-end department stores and by
mail order, costing between $20-50, applicant improperly
attempts to impose limitations on the parties’ goods that
are not present in the identifications thereof. See Id. As
identified in the pleaded registrations and the application
at issue, the parties’ perfume and cologne are identical.
Turning next to the parties’ asserted marks, our
primary reviewing court has held that when marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines. See Century 21 Real Estate Corp. v.
Century Life of America, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Moreover, it is well established that the test for
determining likelihood of confusion is not whether the marks
are distinguishable upon side-by-side comparison but rather
whether they so resemble one another as to be likely to
Opposition No. 101,936
9
cause confusion. Visual Information Institute, Inc. v.
Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The marks
at issue must be considered in their entireties; however, if
one feature of a mark is more significant than another
feature, it is proper to give greater force and effect to
that dominant feature for purposes of determining likelihood
of confusion. See, for example, Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983).
In this case, opposer’s pleaded mark (in Registration
No. 1,653,415) comprises the wording PARFUMS DE COEUR in
typed form. In regard to the wording in the marks at issue,
descriptive or generic wording is less significant for
purposes of determining likelihood of confusion. See
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976); and In re El Torito Restaurants Inc., 9
USPQ2d 2002 (TTAB 1988). Inasmuch as the term “PARFUMS” is
descriptive if not generic for the goods at issue, the
dominant portion of those marks is “DE COEUR.” Applicant’s
mark, LE COEUR, is nearly identical to the most significant
and distinctive feature of opposer’s marks.
Therefore, we find that a likelihood of confusion
exists, at a minimum, between applicant’s mark LE COEUR and
opposer’s word mark PARFUMS DE COEUR as used on their
identical goods. Moreover, applicant’s unsupported
Opposition No. 101,936
10
assertions that its goods are intended to move in different
channels of trade from those of opposer, and will be subject
to careful scrutiny by sophisticated consumers, are
unpersuasive given the fact that as set forth in the
application and Registration No. 1,653,415 the goods are, in
part, identical.
In sum, applicant has failed to disclose any evidence
that points to the existence of a genuine issue of material
fact on the issue of likelihood of confusion.
We find therefore that opposer has carried its burden
of proof that no genuine issues of material fact remain as
to likelihood of confusion and that opposer is entitled to
judgment as a matter of law. In view thereof, opposer’s
motion for summary judgment is granted. The opposition is
sustained and registration is refused to applicant.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board