Uptown Wink LLCv.Procop International NV

Trademark Trial and Appeal BoardSep 30, 2016

No. 91219185 (T.T.A.B. Sep. 30, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: September 30, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Uptown Wink LLC v. Procop International NV ________ Opposition No. 91219185 _______ William J. Seiter of Seiter Legal Studio, for Uptown Wink LLC. Jeffrey M. Furr, Furr Law Firm, for Procop International NV. _____ Before Zervas, Gorowitz and Pologeorgis, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Procop International NV (“Applicant”) is the owner of application Serial No. 86276533 filed on May 9, 2014, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), for the standard character mark PrettyWoman for the following International Class 35 services: promoting the goods and services of others by providing a website featuring advertisements, banners and links to the Opposition No. 91219185 - 2 - websites of others in the field of adult-themed products, services and entertainment; providing dissemination of advertising for the goods and services of others via a global computer network; providing commercial directory information in the area of adult-themed products, services and entertainment via a global computer network; providing an on-line computer database in the field of locating and describing adult-themed products via a global computer network.1 In its Notice of Opposition,2 Uptown Wink LLC (“Opposer”) alleges ownership of the following registrations and applications: a. Registration No. 2648569 (renewed) for the mark PRETTY WOMAN (in typed form) for “nail and manicure products, namely, artificial fingernails, nail enhancement kits comprised of fingernail art and design products for use on fingernails, namely, stickers,” in International Class 3, and “manicure implements, namely, fingernail files and buffers, artificial nail applicator sticks, pedicure files and buffers, and adhesive applicator stick” in International Class 8; b. Registration No. 3915205 (in standard characters) for the mark PRETTY WOMAN for “candles” in International Class 4; c. Registration No. 4226100 (in standard characters) for the mark PRETTY WOMAN for “fragrances for personal use, perfumes, toilet water” in International Class 3; d. Application Serial No. 86273783 (filed May 7, 2014, in standard characters) for the mark PRETTY WOMAN for “Clothing, namely, t-shirts, shirts, tank tops, sweat shirts, sweat pants, sweat suits, jeans, pants, shorts, overalls, jumpsuits, skirts, dresses, blouses, jackets, sweaters, vests, swimwear, bathing suits, cover-ups, sleepwear, pajamas, robes, nightgowns, leotards, lingerie, panties, bras, boxer shorts, underwear, scarves, belts, socks, stockings, tights, leggings, gloves; outerwear, namely, coats and raincoats; headgear, namely, hats, caps, headbands, visors and 1 Application Serial No. 86276533 claims first use and first use in commerce on April 1, 2014. 2 7 TTABVUE 28. Opposition No. 91219185 - 3 - bandanas; footwear, namely, shoes, slippers, boots, sandals, flip-flops, and athletic shoes” in International Class 25; and e. application Serial No. 85930608 (filed May 13, 2013, in standard characters) for the mark PRETTY WOMAN for “Nail polish; nail enamels; nail polish top coat; nail polish base coat; nail care preparations; cuticle oils; cuticle cream; nail conditioning lotions; hand creams; nail hardeners; nail polish remover; lipstick; lip gloss; lip liner; lip balm” in International Class 3.3 Opposer alleges Applicant’s mark is confusingly similar to Opposer’s PRETTY WOMAN mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).4 Applicant, in its Answer, has denied the salient allegations of the Notice of Opposition. The Record In addition to Applicant’s opposed application which is automatically of record pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the evidence of record consists of Opposer’s notice of reliance on the following: ● printouts from the Office’s TESS database of registration and application records for Opposer’s registrations and applications mentioned above;5 ● Applicant’s responses to Opposer’s first set of interrogatories; 3 Opposer also alleged ownership of Registration No. 3424942 for the mark PRETTY WOMAN for “Clothing, namely, shirts, t-shirts, blouses, sweaters, footwear, hats, caps, gloves, skirts, shorts, pants, trousers, coats, jackets, swim wear, suits, and dresses” in International Class 25. The Office cancelled this registration on December 12, 2014. We therefore give this registration no further consideration. 4 Opposer also alleged dilution under Section 43(c) of the Trademark Act, 15, U.S.C. § 1125(c). Because Opposer did not pursue this claim in its trial brief, it has waived this claim. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013). 5 39 and 40 TTABVUE. Opposition No. 91219185 - 4 - ● Applicant’s responses to Opposer’s first request for production of documents and things. Applicant did not submit evidence or a trial brief. Standing Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. To establish standing in an opposition or cancellation proceeding, a plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Court of Appeals for the Federal Circuit has enunciated a liberal threshold for determining standing in Board proceedings. Ritchie, 50 USPQ2d at 1030. Opposer’s evidence establishes that Opposer owns applications (which were filed prior to Applicant’s application) and registrations for the mark PRETTY WOMAN. This is sufficient to demonstrate that Opposer has “both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of damage” and, therefore, has standing. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Priority and Likelihood of Confusion Because Opposer’s registrations are of record, and because Applicant has not filed a counterclaim to cancel any of Opposer’s pleaded registrations, priority is not an Opposition No. 91219185 - 5 - issue in the oppositions as to the marks and the goods listed in the pleaded registrations. King Candy, 182 USPQ at 110. To prevail on its claim of likelihood of confusion, Opposer must prove that there is a 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). Opposer’s arguments in its brief are directed only to the similarity of the marks, and the goods and services. Turning first to the similarity of the marks, we find that Opposer’s and Applicant’s marks are identical but for the lack of a space between the two words in the Applicant’s mark. This lack of a space between the two words in the marks has no trademark significance and does not differentiate the marks. Next, we consider the similarity of the parties’ goods and services. We must consider the goods and services identified in Applicant’s involved application and Opposer’s registrations which are properly of record. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1992). Opposition No. 91219185 - 6 - Opposer does not rely on any of the evidence to support its contention that its goods and Applicant’s services are related. Rather, Opposer maintains: [I]t is well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985). Relatedness is a given when the applied[-]for services of one party can encompass the goods of the other party. In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003); Hewlett- Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Applicant’s services, promoting of the goods and services of others and providing dissemination of advertising for the goods and services of others via a global computer network, are unlimited as to the types of goods of others so promoted and advertised, and therefore can include promoting and advertising goods which are the same as Opposer’s goods. Thus, Applicant’s applied for services are clearly related to Opposer’s goods.6 We are not persuaded that there is a recognizable relationship between the parties’ goods and services. All but one of Applicant’s services is identified as being in the adult-themed products or adult-themed services and entertainment field, and no inherent relationship is apparent to us between Opposer’s goods and Applicant’s services in the adult-themed services and entertainment field. (Opposer itself does not rely on these adult-themed services in advocating a relationship between the services.) The only service which is not restricted to adult-themed services and entertainment is “providing dissemination of advertising for the goods and services of others via a global computer network.” With regard to this service, no apparent 6 Opposer’s brief at 7-8, 12 TTABVUE 11-12. Opposition No. 91219185 - 7 - relationship exists with Opposer’s goods, and Opposer has not articulated any such relationship. Opposer cites Coors Brewing and Hewlett-Packard. These cases, however, do not state that “[r]elatedness is a given when the applied[-]for services of one party can encompass the goods of the other party.” Coors Brewing states the following, which does not help Opposer: We therefore disagree with the Board’s legal conclusion that Coors’ beer and the registrant’s restaurant services are sufficiently related to support a finding of a likelihood of confusion. See Elec. Design & Sales v. Elec. Data Sys., 954 F.2d 713, 717 [21 USPQ2d 1388] (Fed. Cir. 1992); see also Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1478 (TTAB 1987). The evidence of overlap between beer and restaurant services is so limited that to uphold the Board’s finding of relatedness would effectively overturn the requirement of [Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] that a finding of relatedness between food and restaurant services requires “something more” than the fact that restaurants serve food. Coors at 1063-64. Additionally, Hewlett-Packard involved a situation where one party owned registrations for goods and services which the court found were “closely related” to the services the applicant sought to register. There was no discussion in the court’s opinion about the services of one party encompassing the goods of the other party. We point out too that under Opposer’s reasoning, any goods would be related to the service of advertising those goods, a proposition we do not accept. It is Opposer’s burden to prove its likelihood of confusion claim, and likelihood of confusion is determined on a case-by-case basis. In re Viterra Inc., 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Opposer’s evidence does not demonstrate a relationship Opposition No. 91219185 - 8 - between Opposer’s goods and Applicant’s services. We therefore find that Opposer has not established that there is a likelihood of confusion between Opposer’s mark PRETTY WOMAN for the goods listed in Opposer’s registrations and Applicant’s mark PrettyWoman for Applicant’s recited services. Decision: The opposition is dismissed.