R. Josephs Licensing Inc. v Laurie Porter

Trademark Trial and Appeal Board

Nov 9, 2007

No. 91166220 (T.T.A.B. Nov. 9, 2007)

Mailed:
November 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

R. Josephs Licensing Inc.

v.

Laurie Porter
_____

Opposition No. 91166220 to application Serial
No. 78469346 filed on August 18, 2004
_____

Timothy T. Tyson of Freilich, Hornbaker & Rosen for
R. Josephs Licensing Inc.

Kit M. Stetina and Stephen Z. Vegh of Stetina Brunda Garred
& Brucker for Laurie Porter.
______

Before Bucher, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On August 18, 2004, Laurie Porter (“applicant”) filed
an application for registration of the mark OCEAN LAGUNA (in
standard character form) on the Principal Register for
“clothing, namely, T-shirts, shirts, jackets, pants,
sweatshirts, headwear, hats, swimsuits, surf trunks, [and]
wetsuits” in International Class 25. Applicant has asserted
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91166220
2
a bona fide intent to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b) and has
entered a statement into the application providing that the
foreign wording in the mark, i.e., LAGUNA, translates to
“lagoon.”1
R. Josephs Licensing Inc. (“opposer”) has filed a
timely notice of opposition to registration of applicant's
mark. In the notice of opposition, opposer pleaded that it
and its predecessors in interest began selling clothing in
interstate commerce under the mark LAGUNA since at least as
early as 1946 and has been selling clothing under the LAGUNA
mark since then; and that opposer is the owner of
Registration No. 15411252 for the mark LAGUNA (in typed
form) for, among other goods,
men's, boys', and juvenile boys' clothing, namely
swim suits, swim wear, sport shirts, warm-up
suits, t-shirts, jackets, suits, sportcoats,
underwear, belts, hats, shoes, ties, and pajamas;
women's, girls', and juvenile girls' clothing,
namely blouses, skirts, jackets, jogging suits,
shorts, pants, jeans, socks, belts, swim suits,
swim wear, hats, underwear, sleepwear, and
pajamas.

Further, opposer has alleged that applicant's mark “so
resembles marks previously registered … and previously used
by Opposer and not abandoned, as to be likely, when applied

1 In her application, applicant claimed ownership of Registration
No. 2852036 for the mark OCEAN LAGUNA, which registered on
June 8, 2004 for “cosmetics, namely, bath soaps.”
2 Issued May 30, 1989. Section 8 declaration accepted and
Section 15 declaration acknowledged.
Opposition No. 91166220
3
to the [goods] of the Applicant, to cause confusion, or to
cause mistake, or to deceive” in violation of Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d).
Applicant has denied the salient allegations of the
notice of opposition, but has admitted that opposer is the
owner of pleaded Registration No. 1541125. The parties have
fully briefed this case.
The Record
Of course, the record includes the file of application
Serial No. 78469346 and the pleadings. Additionally,
opposer has filed (i) a notice of reliance submitting a
status and title copy of Registration No. 1541125, (ii) the
transcript of the August 24, 2006 testimonial deposition,
with exhibits, of Ronald H. Josephs, President and owner of
opposer; and (iii) the transcript of the December 6, 2006
rebuttal deposition of Mr. Josephs, with exhibits.3
Applicant has filed (i) a notice of reliance making
applicant's Registration No. 2852036 for the mark OCEAN
LAGUNA for “cosmetics, namely bath soaps” of record; and
(ii) a transcript of applicant’s testimonial deposition,
with exhibits.

3 Citations to pages in Mr. Josephs’ deposition in this opinion
are to his testimonial deposition and not to his rebuttal
deposition.

Opposition No. 91166220
4
Standing/Priority
Because opposer has made a status and title copy of
Registration No. 1541125 of record, showing that it is in
full force and effect and owned by opposer, opposer has
established its standing to oppose registration of
applicant's mark and its priority is not in issue. See King
Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
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 issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). 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).
The Goods
We first examine the similarity or dissimilarity of the
parties’ goods, considering the goods as they are described
Opposition No. 91166220
5
in the identification of goods in applicant's application
and opposer's registration. See Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76
(CCPA 1973). Applicant's identification of goods includes
within its scope the men’s, boys’ and juvenile boys’ T-
shirts, jackets, hats and swim suits, and the women’s,
girls’ and juvenile girls’ jackets, pants, hats and swim
suits, which are specified in registrant’s identification of
goods. Additionally, applicant's “surf trunks” are
encompassed within opposer's “swim wear,” and applicant's
sweatshirts and wetsuits are otherwise related to opposer's
casual clothing items. We therefore resolve this factor in
opposer's favor.
Trade Channels
Given the absence of any restrictions or limitations in
the parties' respective identifications of goods in the
application and the registration, the parties' clothing
items – some of which are legally identical - are deemed to
be marketed in the same trade channels and to the same
classes of purchasers. Kangol Ltd. v. KangaROOS U.S.A.,
Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992)
(“There is no evidence that opposer's and applicant's goods
are currently being sold in the same channels of trade.
Yet, in neither the applicant's application nor the
opposer's registrations are the trade channels in any way
Opposition No. 91166220
6
restricted. The issue of likelihood of confusion is
resolved by considering the ‘normal and usual channels of
trade and method of distribution.’”) (Citations omitted).
Thus, we must consider, for purposes of the likelihood of
confusion analysis, that applicant could sell her goods in
retail department stores such as Ross, Marshalls, Wal-Mart
and K-Mart and sporting goods stores, the same outlets
through which opposer's goods are sold. See Josephs dep.
pp. 31 - 35. We must also consider that both parties
advertise in the same newspapers and magazines, and attend
the same trade shows and expos, including those referred to
by applicant in her testimony at pp. 20 - 25. The
presumptive common channels of trade therefore is a factor
that weighs in opposer's favor.
Conditions of Sale
Because the clothing identified in the parties’
identifications of goods may include inexpensive and
frequently replaced items which may be purchased on impulse,
and because clothing is purchased by virtually everyone,
purchasers of both parties’ clothing must be deemed to
include impulse purchasers, and not exclusively those
purchasers who exercise greater care than impulse
purchasers, as posited by applicant for her goods. See
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1899 (Fed. Cir. 2000) (“When products are relatively low-
Opposition No. 91166220
7
priced and subject to impulse buying, the risk of likelihood
of confusion is increased because purchasers of such
products are held to a lesser standard of purchasing
care”)(citations omitted). This factor too favors opposer.
Fame
In arguing that this du Pont factor should be resolved
in opposer's favor, opposer relies on Mr. Josephs’ testimony
regarding the revenues opposer has received for sales of
clothing bearing the LAGUNA mark. Specifically, when asked
about such revenue, Mr. Josephs replied; “It’s over half a
million dollars, I can’t say exactly. But it could be over
a million, I’m sure, but I’m not positive for sure.” This
evidence is not particularly persuasive because it is not
supported by documentary evidence, is not precise and does
not reflect sizable revenues for clothing.4 Opposer has not
introduced evidence directed to the other usual indicia of
fame, such as advertising figures, sales figures or critical
acclaim of any of opposers’ products. See Kenner Parker
Toys, Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992); Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002). Thus, even when we consider that opposer has used

4 Mr. Josephs' testimony regarding opposer's revenues from the
sale of LAGUNA brand footwear is not probative because opposer
has not alleged a likelihood of confusion between opposer's
footwear and applicant's clothing items.

Opposition No. 91166220
8
the mark on clothing for sixty years, opposer's LAGUNA
clothing has been sold in national retail chain stores,
opposer has had over $100,000,000 in sales of various LAGUNA
branded goods, opposer has licensed its mark to others, and
opposer obtains a minimum monthly royalty of $11,000 per
month, opposer has not established that its mark for
clothing is famous or even well-known. The du Pont factor
concerning fame hence is neutral.
The Marks
We now turn to the marks. We must determine whether
the marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
In arguing that the marks are similar, opposer
maintains that LAGUNA is the dominant component of
applicant's mark and that “[s]ince Opposer already has the
registration for the word LAGUNA in the same class for the
same goods and substantially the same goods, Applicant is
precluded from receiving a registation for OCEAN LAGUNA.”
Brief at 9 – 10. Opposer states that LAGUNA is dominant
because “LAGUNA is the noun and the word OCEAN is merely an
adjective that tells what type of LAGUNA”; and that
applicant's mark is well-known and famous and “a well-known
and famous part of a composite will likely make the most
Opposition No. 91166220
9
impression on the ordinary viewer [and be] treated as the
dominant portion of conflicting marks and given greater
weight in the comparison.” Opposer emphasizes that its mark
“has been in use since 1946 on clothing and has had over
$100,000,000 in sales at retail over the last five years.”5
We have found earlier in our opinion that opposer's
mark is not a famous or even a well-known mark and hence
reject its argument that LAGUNA is the dominant portion of
its mark on this basis. See discussion infra. We also are
not persuaded by opposer's argument that OCEAN modifies
LAGUNA and indicates what kind of LAGUNA. Opposer, by
implication, maintains that the term LAGUNA would be
recognized by the purchasing public as the foreign word
“lagoon,” and that purchasers would translate LAGUNA into
English when seeing the composite OCEAN LAGUNA. There
simply is no basis for us to accept that purchasers would
translate LAGUNA to “lagoon,” especially when LAGUNA has an
association with Laguna Beach, California, which is a noted
artist community. See entry for “Laguna Beach” in The
Columbia Encyclopedia (2004), of which we take judicial
notice, i.e., “A residential and resort community with a
noted art colony and many cultural attractions, the city
profited from the rapid growth and prosperity of Orange Co.

5 The $100,000,000 figure includes sales of footwear, and is not
limited to sales of clothing.

Opposition No. 91166220
10
in the 1980s and 90s.”6 See also references to “Laguna” in
the record, e.g., applicant's statement at p. 17 of her
deposition “I use plants that are native to the area of
Laguna – they are not specifically from Laguna, but plants
that are found along the coastline”; and Exhibit L to
applicant's deposition including an article from Laguna News
Post and a letter from “Laguna Board of Realtors.”
Applicant's analysis of the marks is equally
unpersuasive. In her brief at p. 10, applicant argues that
she has a line of bath and body products marketed under the
OCEAN LAGUNA mark; and that she uses ingredients that are
native to the coastline of Laguna Beach in such products and
that they have the “salt air and scent of the ocean.” As a
consequence, she concludes that “not only is the term
‘ocean’ not necessarily used as an adjective to describe
‘what type of laguna’, as suggested by Opposer, but that it
is derived from the ‘ocean-inspired’ nature of the brand and
the location from which components of the branded products
may be found.” Id. at 10 – 11. She maintains that OCEAN
and LAGUNA are “coequals in terms of the qualities featured
in Applicant's cosmetic and clothing products”; and that

6 From the website credoreference.com. The Board may take
judicial notice of dictionary definitions and standard reference
works which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Opposition No. 91166220
11
“[a]rguably, the first term ‘OCEAN’ is the ‘salient feature’
of Applicant's Mark in light of the ‘ocean-inspired’
derivation of all of Applicant's products, with the term
‘LAGUNA’ perhaps suggesting a geographically qualitative
reference.” Id. at p. 11. And, at p. 12 of her brief, she
points out that “[t]ypically, Applicant's bath and beauty
products are displayed and sold together with their apparel
products, and in particular, t-shirts bearing Applicant's
‘OCEAN LAGUNA’ mark.”
However, “in a proceeding such as this, the question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or services
recited in applicant’s application vis-à-vis the goods
and/or services recited in an opposer’s registration, rather
than what the evidence shows the goods and/or services to
be.” Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). See also, Octocom Systems Inc. v. Houston Computers
Services Inc., 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 ….”). Thus, it is
irrelevant what scents applicant's body soaps and lotions
Opposition No. 91166220
12
conjure up; applicant's identification of goods does not
include body soaps and lotions. Further, it is irrelvant
how applicant actually uses its mark; we must consider only
those goods listed in the identification. As to those
identified goods, i.e., items of clothing, there is no
reason to believe that the scent of the ocean and salt air
would come to mind when purchasers simply see the term OCEAN
in OCEAN LAGUNA.
Additionally, we do not agree with applicant that OCEAN
is the salient term in applicant's mark. Three of
applicant's goods are well suited for use in oceans.
Specifically, applicant’s swimsuits could be used in oceans
and applicant's surf trunks and wetsuits would primarily be
used in oceans. Thus, the term OCEAN in applicant's mark,
as applied to these goods, suggests a use for these goods
and consumers could perceive applicant's mark as indicating
that the LAGUNA brand swimsuits, surf trunks and wetsuits
are specially constructed or intended for ocean use. We
thus find that LAGUNA is the salient or dominant term in
applicant's mark with OCEAN being a suggestive term that is
less significant in creating the commercial impression of
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985) (although marks must be considered
in their entireties, there is nothing improper, under
Opposition No. 91166220
13
appropriate circumstances, to give more or less weight to a
particular portion of a mark).
In comparing applicant's mark to opposer's mark, we
find that the term in applicant's mark which creates a
greater impression on the purchaser is identical to
registrant’s mark. While the marks have obvious differences
in appearance and pronunciation due in part to the inclusion
of OCEAN in applicant's mark, these differences are not as
significant as the similarities created by the identical
common term. In view of the shared term, we find that the
meanings of the marks and their commercial impressions are
not dissimilar – the additional wording in applicant's mark
does not alter the overall meaning and commercial impression
of the marks and any differences in the meaning and
commercial impression of the marks are not very significant.
We conclude that, when we consider these marks in their
entireties, the differences in appearance, pronunciation,
meaning, and commercial impression are eclipsed by the
similarities of the marks. In view thereof, and because (i)
a “[s]ide by side comparison is not the test,” Grandpa
Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573 (CCPA 1973), (ii) the focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks,
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
Opposition No. 91166220
14
1975), and (iii) “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines,” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), we
find that the marks are more similar than dissimilar.
This du Pont factor is resolved in opposer's favor.
Similar Marks Used
On Similar Goods

Applicant has introduced the following from the TESS
database of the U.S. Patent and Trademark Office into the
record: (i) search results for marks having only the
wording OCEAN in all International Classes; (ii) search
results for marks having only the wording LAGUNA in all
International Classes; (iii) search results for all marks
containing LAGUNA in International Class 25; and (iv) a
printout of each application and registration identified in
(i) and (ii). Most of applicant's evidence is of very
limited probative value - the search results do not include
the goods or services recited in the applications and
registrations; the applications are only evidence of the
fact that they were filed; the registrations are not
evidence that the different marks shown therein are in use;
and many of the registrations have expired or are for
unrelated goods and/or services. See Olde Tyme Foods Inc.
v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed.
Opposition No. 91166220
15
Cir. 1992) (regarding the “strength of a mark, however,
registration evidence may not be given any weight”); Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ
462 (CCPA 1973)(“in the absence of any evidence showing the
extent of use of any of such marks or whether any of them
are now in use, they provide no basis for saying that the
marks so registered have had, or may have, any effect at all
on the public mind so as to have a bearing on likelihood of
confusion”); Interpayment Services Ltd. v. Docters & Thiede,
66 USPQ2d 1463, 1468, n. 6 (TTAB 2003) (“third-party
applications are evidence only of the fact that they were
filed; they have no other probative value”); In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217 - 1218
(TTAB 2001) (“these registrations are not evidence that the
marks shown therein are in use or that the public is
familiar with them”); Sheller-Globe Corporation v. Scott
Paper Company, 204 USPQ 329, 336 (TTAB 1979) (“we need not
comment on the third-party registrations placed in the
record by applicant save to note that they pertain to
completely unrelated goods and are therefore irrelevant.”)
Because the record does not show through proper evidence any
third party uses of the same or similar marks, we accord
opposer's mark the normal scope of protection otherwise
afforded to registered marks. This factor is neutral in the
likelihood of confusion analysis.
Opposition No. 91166220
16
Variety of Goods
on Which the Mark is Used

Because there only is evidence that opposer's LAGUNA
mark has been used on apparel and footwear, this factor too
is neutral.
Absence of Actual Confusion
The record does not include any evidence of actual
confusion. However, although applicant has testified that
she has used the mark on T-shirts, there is no evidence as
to the extent of such use. We cannot find on this record
that there has been any meaningful opportunity for actual
confusion to have occurred, and we therefore cannot conclude
that the apparent absence of actual confusion is either
factually surprising or legally significant. This factor is
neutral in our likelihood of confusion analysis in this
case.
Conclusion
After weighing each of the relevant du Pont factors,
and considering the marks in their entireties, we find that
there is a likelihood of confusion. Opposers have
established that the marks are sufficiently similar, that
the goods are legally identical or otherwise related, that
the trade channels are identical, and that the goods may be
purchased on impulse by the general public so that confusion
as to source is likely to occur.
Opposition No. 91166220
17
DECISION: The opposition is sustained and registration
to applicant is refused.