The Wet Seal, Inc. v. FD Manage-ment, Inc.

THIS OPINION IS A

PRECEDENT OF THE

THE TTAB

Oral Hearing: Mailed:

April 12, 2006 February 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

The Wet Seal, Inc.

v.

FD Management, Inc.

_____

Opposition No. 91157022

_____

John M. Cone of Hitchcock Evert LLP for The Wet Seal, Inc.

Joseph R. Dreitler of Frost Brown Todd LLC for FD Management,

Inc.

______

Before Holtzman, Kuhlke and Walsh, Administrative Trademark

Judges.

Opinion by Holtzman, Administrative Trademark Judge:

On February 5, 2002, applicant, FD Management, Inc., filed

an application to register the mark ARDENBEAUTY (in typed or

standard character form) based upon an allegation of a bona

fide intention to use the mark in commerce for the following

goods, as amended:

Fragrance products for personal use, namely,

perfume, cologne, toilet water, scented body lotion

and moisturizing cream, body oil, body powder,

Opp. No. 91157022

scented skin soap; cosmetics and skin care

preparations, namely, foundation make-up, face

powder, blusher, compacts, eye pencils, lip pencils,

lipstick, lip gloss, non-medicated lip balm,

mascara, eye make-up, eyeliners, skin moisturizer

and skin toner; hair care products, namely, shampoo,

hair conditioners, hair gel and hair spray; nail

care preparations, namely, nail polish, nail

strengtheners, and nail polish remover; shaving

cream, shaving gel, after-shave lotion; skin soap;

shower gel; deodorant; antiperspirant; potpourri;

sachets; suntanning preparations; sun screen and sun

block preparations, in Class 3.1

On June 30, 2003, The Wet Seal, Inc. (opposer or Wet Seal)

filed an opposition to registration of the mark in the

application. As grounds for opposition, opposer asserts that

since a date prior to the filing date of applicant's intent-

to-use application, opposer has used the mark ARDEN B for

women's clothing, footwear, purses and bags, hair ornaments and

jewelry; and in connection with retail apparel stores featuring

women's clothing, footwear, hats and clothing accessories; and

that applicant's mark ARDENBEAUTY when used on applicant's

goods so resembles opposer's mark ARDEN B for its goods and

services as to be likely to cause confusion.

Applicant, in its answer, has denied the salient

allegations in the notice of opposition.

1

Application Serial No. 76372550. The application includes a claim

of ownership of Registration Nos. 2453605; 2278502; 1914462; 1813342;

1649230; 1579710; 1073947; 0545890; and 0545592, for marks

consisting of or comprising ELIZABETH ARDEN for a variety of personal

and beauty care products and services.

2

Opp. No. 91157022

The record includes the pleadings and the file of the

involved application; opposer's testimony (with exhibits) of

Laura Nicholas, opposer's vice president of store operations;

and applicant's testimony (with exhibits) of Ronald Rolleston,

applicant's executive vice president and chief marketing

officer; and James Thomas Perry, vice president and associate

general counsel of applicant's parent company, Elizabeth Arden,

Inc. In addition, opposer filed notices of reliance on

February 24, 2005 and June 10, 2005; and applicant filed

notices of reliance on March 31, 2005 and April 13, 2005.

Both opposer and applicant filed briefs. An oral hearing

was held.

Before addressing the merits of the case, some evidentiary

matters require our attention. Applicant has filed a motion to

strike opposer's June 10, 2005 notice of reliance consisting of

printouts of third-party registrations on the ground that the

evidence constitutes improper rebuttal.2 Opposer states in the

notice of reliance that it is relying on this evidence to show

a relationship between clothing and cosmetic products. Opposer

argues that the evidence constitutes proper rebuttal "as it

answers Mr. Rolleston's attempts to deny agreeing to this

2

The Board, on July 18, 2005, issued an order deferring consideration

of the motion to strike until final decision.

3

Opp. No. 91157022

point" (Reply Brief, p. 8), meaning that Mr. Rolleston would

not concede, on cross-examination, that the goods are related.

The motion to strike is well taken. This rebuttal

evidence was not submitted for the proper purpose of denying,

explaining or discrediting applicant's case but instead was

clearly an attempt by opposer to strengthen its case-in-chief.

See The Ritz Hotel Limited v. Ritz Closet Seat Corp., 17 USPQ2d

1466 (TTAB 1990). The burden is on opposer, in the first

instance, to come forward during its own testimony period with

proof of the essential elements of its claim, one element of

which is the relatedness of the parties' goods. Opposer should

not have even assumed that applicant would call its own

witness, let alone that the witness, if called, would make an

admission favorable to opposer's case.

The motion to strike the notice of reliance filed June 10,

2005 is accordingly granted, and the materials submitted

thereunder have not been considered.

Further, we note that opposer has introduced, by its

notice of reliance dated February 24, 2005, certain documents

which are not appropriate for introduction in that manner as

they do not qualify as either printed publications, such as

books and periodicals available to the public, or as official

records as contemplated by Trademark Rule 2.122(e). These

documents are identified in the notice of reliance as exhibits

4

Opp. No. 91157022

24-29 and 31-35 and they include annual reports, financial

statements, advertising invoices and other advertising

documents.3 Consequently, these exhibits have not been

considered. Other documents, which are identified in the

notice of reliance as exhibits 2 through 23, and exhibit 30,

although not otherwise admissible by notice of reliance, are

considered of record as they are duplicates of exhibits which

were properly introduced during the testimony of Ms. Nicholas.

In addition, we note that applicant raised a number of

objections during the deposition of Ms. Nicholas, to her

testimony regarding matters which occurred prior to her

employment with opposer in 2001, including her testimony

regarding opposer's use of the mark prior to that date.

However, by failing to preserve the objections by renewing them

in its brief, applicant has waived its objections to this

evidence. See TBMP §§707.03(c) and 707.04 (2d ed. rev. 2004),

and cases cited therein, including Hard Rock Café International

(USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000)

(objection to exhibit raised during deposition but not

maintained in brief deemed waived); and Reflange Inc. v. R-Con

International, 17 USPQ2d 1125, 1126 n.4 (TTAB 1990) (objections

3

Opposer has attempted to introduce the exhibits in the notice of

reliance by the declaration of an officer of opposer who identifies

and attests to the authenticity of the attached documents. However,

absent a stipulation by the parties to introduce evidence in this

manner, the declaration is not properly of record. See Trademark

Rule 2.123(2)(b).

5

Opp. No. 91157022

to testimony and exhibits made during depositions deemed waived

where neither party raised any objection to specific evidence

in its brief).

Finally, we note that in addition to its pleaded ground of

likelihood of confusion, opposer in its brief, pointing to

statements made during opposer's cross-examination of Mr.

Rolleston, argues the unpleaded claim that the involved

application is void ab initio on the ground that applicant did

not have a bona fide intention to use the mark in commerce on

at least some of the identified goods as of the filing of the

application. Applicant did not object to opposer's cross-

examination on this subject during the deposition and raised no

objection in its brief to opposer's introduction of this

evidence on the ground that opposer failed to either originally

plead or amend the pleading to assert the new issue. Moreover,

applicant has addressed the issue on the merits in its brief.

Thus, we find that the issue of applicant's bona fide intent to

use the mark was tried by the parties with applicant's implied

consent. The pleading is accordingly deemed amended under Fed.

R. Civ. P. 15(b) to conform to the evidence and to assert the

claim. However, contrary to opposer's contention, an

application will not be deemed void for lack of a bona fide

6

Opp. No. 91157022

intention to use absent proof of fraud,4 or proof of a lack of

bona fide intention to use the mark on all of the goods

identified in the application, not just some of them.5 See,

with regard to use-based applications, Grand Canyon West Ranch

LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006). Thus, we

will decide this issue in terms of whether the items, if any,

for which opposer has shown applicant's lack of bona fide

intention to use the mark should be deleted from the

application.

We turn then to the merits of the case and first, the

issue of likelihood of confusion. Briefly, opposer, The Wet

Seal, Inc., is a young women's or girls' junior contemporary

apparel and accessories company operating a chain of stores

under the name WET SEAL. ARDEN B is a division of opposer, and

it was developed as an extension of opposer's junior business.

Opposer claims that it has been selling clothing and

accessories under the ARDEN B mark since 1997 and that it has

4

Fraud occurs when an applicant makes a false, material

representation that the applicant knew or should have known was

false. See General Car and Truck Leasing Systems, Inc. v. General

Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990). Opposer's counsel

stated at the oral hearing that a claim of fraud has been asserted,

but we find no such claim in the pleading or in the trial record.

5

Opposer has cited Caesars World, Inc. v. Milanian, 126 Fed.Appx. 775

C.A.9 (Nev.) (February 01, 2005) in support of its position that the

application should be held void. This case was not published in the

Federal Reporter and moreover there is nothing in the decision to

indicate that the application was held void based on the lack of bona

fide intent to use the mark on fewer than all the goods.

7

Opp. No. 91157022

operated retail clothing and accessories stores under the ARDEN

B mark since 1998.

Applicant, FD Management, Inc., is a wholly-owned

subsidiary of Elizabeth Arden, Inc. Although applicant filed

the involved application on an intent-to-use basis, the record

shows that applicant actually began using the ARDENBEAUTY mark

on or about August 2002 on at least some of the products

identified in the application, including perfume, body lotion

and body wash.

Applicant contends that it has used the ARDENBEAUTY mark

prior to any date on which opposer can rely. In particular,

applicant is claiming priority based on its predecessors'

earlier use and ownership of registrations for ELIZABETH ARDEN

and/or their asserted earlier use of ARDEN alone in connection

with a variety of beauty care products and services.

Applicant also argues that the existence of a prior settlement

agreement between the parties "negates any potential likelihood

of confusion" between the two marks.6 Brief, p. 3.

6

The agreement itself was introduced, pursuant to the parties'

protective order, as a confidential exhibit to the testimony of Mr.

Rolleston. However, the testimony regarding the agreement has not

been redacted or made confidential. Further, the agreement was again

introduced during the deposition of Mr. Perry with no mention of its

confidential nature, and the parties have openly discussed certain

provisions of the agreement in their briefs. Thus, the

confidentiality of the agreement is waived. The Board will

nonetheless exercise discretion in discussing the agreement.

8

Opp. No. 91157022

As background for the settlement agreement, prior to this

opposition, opposer had filed two applications for ARDEN B. in

the stylized form shown below.

One application was for women's clothing and accessories and

for retail clothing and accessory store services (Serial No.

75365543, filed September 30, 1997); and the other was for

sunglasses, jewelry, handbags, and hair ornaments (Serial No.

75394241, filed November 21, 1997).

Applicant's predecessors, Unopco Sub, Inc. and Conopco,

Inc., dba Elizabeth Arden Co., opposed each application

(Opposition Nos. 91112906 and 91112592, respectively) on the

ground of likelihood of confusion based on their ownership of

the mark ELIZABETH ARDEN in connection with a variety of beauty

care products and services.

The parties on January 9, 2001 entered into a settlement

agreement whereby the opposers in that case consented to Wet

Seal's use and registration of ARDEN B,7 and Wet Seal agreed, in

7

The agreement provides that Wet Seal is entitled to use and register

the ARDEN B mark in the script format shown above or, if different

than that format, "in a distinctively stylized form which is not the

same as, nor likely to cause consumer confusion with, any of the

stylized forms by which the Elizabeth Arden Mark is commercially

portrayed..."

9

Opp. No. 91157022

relevant part, never to use the mark ARDEN B on or in

connection with "cosmetics, skin care, hair care or fragrance

products...or as the name of spas, salons or stores

specializing in the sale of cosmetics, skin care, hair care or

body products or services... ."8 The oppositions were then

dismissed.

Wet Seal subsequently abandoned those two applications in

settlement of an opposition by a different party and on March

6, 2002 refiled applications for ARDEN B in the stylized form

below.9

From those applications, Registration No. 2795689 for retail

clothing stores issued on December 16, 2003; and Registration

8

We note that there are no provisions in the agreement regarding any

rights of applicant in the term ARDEN alone or otherwise apart from

ELIZABETH ARDEN.

9

The agreement contains no provisions which would preclude Wet Seal

from asserting its claimed rights in the term ARDEN B for the

identified goods and services against applicant. The agreement does

require Wet Seal to "avoid the use of the distinctive trade dress

features of the Elizabeth Arden 'red door' spas" including the color

red to a certain extent on materials such as clothing labels or store

signage, and Wet Seal agreed to discontinue use of the labels

displayed on "Exhibit B" attached to the agreement. The record copy

of this exhibit is illegible, but in any event, any question of

whether Wet Seal is entitled to use the ARDEN B mark in the form

shown above is not an issue in this case.

10

Opp. No. 91157022

No. 2879970 for women's clothing, jewelry and handbags issued

on August 31, 2004.

Opposer's standing and claim of priority

To begin with, we note that opposer filed a notice of

reliance on TARR and TESS copies of one of the registrations

noted above, Registration No. 2795689, for clothing stores.

Apart from any issue as to whether these records are sufficient

to show that the registration is subsisting and owned by

opposer as required by Trademark Rule 2.122(d), opposer did not

move to amend the pleading to add an allegation of ownership of

such registration.10 Because applicant was not otherwise given

fair notice of opposer's reliance on this registration, and

moreover applicant has objected to this evidence in its brief,

we have given no consideration to this unpleaded registration.11

We turn then to opposer's assertion of common law rights

in the ARDEN B mark. In order for a plaintiff to prevail on a

claim of likelihood of confusion based on its ownership of

10

The registration issued three months after the filing of the

opposition.

11

It is not, in any event, at all clear from the record that opposer

is relying on the registration to establish priority. Opposer does

not explain the relevance of the registration in its notice of

reliance, and only mentions the registration in passing in its brief,

and even then not in the context of a claim of priority.

Opposer has also submitted by this notice of reliance a copy of a

pending application for ARDEN B. SPORT. An application is not

evidence of anything except that the application was filed on a

certain date, and this application was filed on December 3, 2003,

subsequent to the filing date of the opposed application.

11

Opp. No. 91157022

common law rights in a mark, the mark must be distinctive,

inherently or otherwise, and plaintiff must show priority of

use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d

1317, 209 USPQ 40 (CCPA 1981). Applicant has not questioned

the distinctiveness of ARDEN B; nor are there any other

circumstances in the case which would have put opposer on

notice of this defense, and we therefore find that the mark is

distinctive.12 See The Chicago Corp. v. North American Chicago

Corp., 20 USPQ2d 1715 (TTAB 1991). See also Shalom Children's

Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993).

As to priority, the testimony of Ms. Nicholas and the

supporting documentation, including labels affixed to the

clothing, wrapping for accessories, product catalogues showing

ARDEN B items of clothing, sales figures, and other records of

use, are sufficient to demonstrate opposer's prior and

continuing use of the mark on women's clothing such as tops,

bottoms, suits and dresses, as well as accessories such as

handbags, belts and hats since 1997, and as a mark for

opposer's retail clothing stores featuring women's clothing and

accessories since 1999.

12

As discussed later in this decision, the record shows that the term

ARDEN is a surname. However, there is no evidence or argument that

opposer's mark ARDEN B, as a whole, is, or would be perceived as,

primarily merely a surname.

12

Opp. No. 91157022

The record shows that opposer changed the font of the

ARDEN B mark in mid-2001 from its original script style to the

block letter form shown above and without the dot or period

after the letter "B." However, we find that these are

inconsequential changes in terms of opposer's continuing

priority rights in the mark. See Ilco Corp. v. Ideal Security

Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976)

("The law permits a user who changes the form of its mark to

retain the benefit of its use of the earlier form, without

abandonment, if the new and old forms create the same,

continuing commercial impression" Italics in original.) There

is no change in significance from one form to the other and the

difference in appearance is negligible. The two marks are

substantially identical. In any event, opposer has

demonstrated use of the mark in its modified form since prior

to the filing date of the application.

We also find that opposer, by virtue of its common law

rights arising from use of the mark ARDEN B on clothing and in

connection with retail clothing stores, has established a real

interest or standing to challenge the involved application.

Contrary to applicant's contention, no more is necessary for

standing. See Lipton Industries, Inc. v. Ralston Purina Co.,

670 F.2d 1024, 1028, 213 USPQ 185 (CCPA 1982).

13

Opp. No. 91157022

Applicant's claim of priority

An intent-to-use applicant is entitled to rely upon actual

use, or use analogous to trademark use, prior to the

constructive use date of the intent-to-use application. See

Corporate Document Services Inc. v. I.C.E.D. Management

Inc., 48 USPQ2d 1477 (TTAB 1998); and Dyneer Corp. v.

Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995).

Applicant contends that consumers will associate its

ARDENBEAUTY fragrance with "the famous 'Elizabeth Arden' and

'Arden' trademarks." Brief, p. 7. Applicant claims, based on

its assertion of 80 years of use and registration, extensive

advertising and significant sales, that its ELIZABETH ARDEN and

ARDEN marks "[are] famous and entitled to a wide scope of

protection." Id. Applicant has introduced status and title

copies of eight registrations for ELIZABETH ARDEN, and two

advertisements for ELIZABETH ARDEN cosmetics emphasizing the

ARDEN portion of the mark. Applicant has also introduced

nearly 200 third-party registrations containing the word BEAUTY

for personal care products. Based on this evidence applicant

argues that the word "beauty" is descriptive of such products

and contributes little to the overall commercial impression

created by ARDENBEAUTY and that ARDEN is the dominant portion

of its ARDENBEAUTY mark.

14

Opp. No. 91157022

Applicant appears to be making two separate "tacking"

arguments. One, that applicant is entitled to tack on the use

of ELIZABETH ARDEN to its present mark ARDENBEAUTY. The second

argument relates to applicant's claimed use of ARDEN alone and

its attempt to tack use of that mark on to ARDENBEAUTY.

The standard for tacking is very strict and tacking in

general is permitted only in "rare instances." See Van Dyne-

Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d

1866, 1869 (Fed. Cir. 1991). In order to tack on prior use of

one mark on to another, the marks must be legal equivalents.

To meet the legal equivalents test, the marks must be

indistinguishable from one another or create the same,

continuing commercial impression such that the consumer would

consider both as the same mark. Van Dyne-Crotty, supra. Thus,

a minor difference in the marks, such as an inconsequential

modification or modernization of the later mark (in the nature

of opposer's modification, for example), would not be a basis

for rejecting a tacking claim. See In re Flex-O-Glass, Inc.,

194 USPQ 203 (TTAB 1977). That is not what we have here.

As to applicant's first argument, applicant has demonstrated

use of the mark ELIZABETH ARDEN in connection with cosmetic and

fragrance products by virtue of the status and title copies of

its registrations for ELIZABETH ARDEN, the earliest of which

issued from an application filed on May 6, 1921. See Trademark

15

Opp. No. 91157022

Rule 2.122(d). However, the evidence that applicant has

presented does not establish that ELIZABETH ARDEN is a famous

mark. Long use and/or registration of a mark, without evidence

of the extent of consumer exposure to or recognition of the

mark over the years,13 is not sufficient to prove fame.14 More

important, the fame of ELIZABETH ARDEN, even if proven, would

not be a factor in our determination. Tacking is a question of

law. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57

USPQ2d 1807, 1812 (Fed. Cir. 2001). As the Court stated

13

The evidence falls far short in this regard. Mr. Rolleston's

testimony on this subject, including his statement that ELIZABETH

ARDEN "is one of the more established names in our industry" (Dep.,

p. 10) is conclusory and unsupported by the record. To the extent

that applicant is attempting to rely on evidence of the asserted

recognition of ARDENBEAUTY to support its contention that ELIZABETH

ARDEN is famous, that argument and evidence fails. First, it is not

clear from the record whether the evidence of use and promotion of

ARDENBEAUTY also pertains to the mark ELIZABETH ARDEN. Even if it

did, however, the evidence is insufficient to establish fame of

ARDENBEAUTY, and therefore, by extension, ELIZABETH ARDEN. Among

other shortcomings of the evidence, the ARDENBEAUTY mark has only

been in use for three years; there is no evidence of any media

recognition during that time; no evidence of actual sales of

ARDENBEAUTY products, as opposed to gross shipments of those products

in units and value; and despite applicant's statement in its brief

that the products have been sold in 8500 stores since the

introduction of ARDENBEAUTY in 2002, there is no evidence to support

that claim. In fact, while ARDEMBEAUTY products at some point

apparently had been sold in department stores, Mr. Rolleston was

unable to identify any department store where the products were

currently being sold and he finally admitted that the ARDENBEAUTY

brand "wasn't remarkably successful in department stores." Dep., p.

91.

14

Applicant also contends that Grupo Gigante SA De CV v. Dallo & Co.,

391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004) supports its claim that

ELIZABETH ARDEN is famous. However, applicant cannot rely on facts

found in other cases to establish fame in this case. Furthermore,

the Court's statement alluding to the fame of ELIZABETH ARDEN was

dicta, made for the purpose of illustrating a hypothetical. It was

not based on a finding of fame.

16

Opp. No. 91157022

(citing Van Dyne-Crotty, supra at 1868), "No evidence need be

entertained other than the visual or aural appearance of the

marks themselves."

Applicant is clearly relying on a likelihood of confusion

analysis in support of its tacking claim, essentially arguing

that because of the fame of ELIZABETH ARDEN, consumers would

associate ARDENBEAUTY with ELIZABETH ARDEN and they would

believe the products sold under either mark come from the same

company. However, the law is clear that two marks are not

necessarily legal equivalents merely because they would be

deemed confusingly similar. Van Dyne-Crotty, Inc., supra.

ELIZABETH ARDEN and ARDENBEAUTY are not legally equivalent

marks. The two marks, while perhaps confusingly similar, are

certainly not indistinguishable. Most significantly,

ARDENBEAUTY does not include ELIZABETH and it adds the word

BEAUTY. Moreover, the two marks on their face impart different

information and create different commercial impressions.

ELIZABETH ARDEN identifies a particular individual.

ARDENBEAUTY, on the other hand, refers broadly to a type of

individual, i.e., an individual possessing a certain quality.

Although the word BEAUTY, as applicant has shown, has

frequently been adopted as part of registered marks in the

field of beauty care products and has little trademark

significance on its own, the term nonetheless contributes to

17

Opp. No. 91157022

the overall commercial impression of the mark. See, e.g.,

American Paging, Inc. v. American Mobilphone, Inc., 13 USPQ2d

2036 (TTAB 1989) (finding AMERICAN MOBILPHONE PAGING more

informative than and hence legally different from AMERICAN

MOBILPHONE notwithstanding that "PAGING" was merely descriptive

of the services), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726

(Fed. Cir. 1990). See also O-M Bread Inc. v. United States

Olympic Committee, 65 F.2d 933, 36 USPQ2d 1041 (Fed. Cir. 1995)

(OLYMPIC KIDS creates a different commercial impression than

OLYMPIC, notwithstanding the disclaimer of KIDS and its lack of

strong trademark significance).

Applicant's claimed use of ARDEN

Putting aside for the moment the question of whether

ELIZABETH ARDEN and ARDEN are legally equivalent marks, we note

at the outset that there is no evidence of actual trademark use

of ARDEN alone and insufficient evidence of promotion of ARDEN

alone to show analogous use.15 Applicant introduced, during the

testimony of Mr. Rolleston, two archival copies of

advertisements for ELIZABETH ARDEN products, one for soap, and

the other for skin cream and lotion. In both advertisements,

15

To the extent that applicant is arguing that it is entitled to

somehow tack on its use of ELIZABETH ARDEN to ARDEN and therefore its

present mark ARDENBEAUTY, without evidence of any use or promotion or

other evidence of consumer perception of ARDEN alone, but merely on

the basis that it is a shortened version of ELIZABETH ARDEN,

applicant's argument is rejected.

18

Opp. No. 91157022

the word ARDEN is displayed in large letters across the top of

the advertisement and ELIZABETH appears in small print within

the letter "D" in ARDEN. The advertisement for skin cream and

lotion contains a copyright notice of 1990; and a typed listing

of magazines, Town & Country, Vanity Fair, Confetti and

American Way, appears below the advertisement. Mr. Rolleston

read the names of the magazines into the record and stated that

the advertisement "features Vendella who was the spokesmodel at

the time [and] was featured" in those magazines. Dep., p. 75.

The advertisement for soap bears a copyright notice of 1992.

There is no similar listing of magazines on the 1992

advertisement, nor any testimony or other evidence indicating

when or where the 1992 ad was published.

To begin with, we note that although opposer argues in its

brief that Mr. Rolleston lacked personal knowledge of the

advertisements and cross-examined him on that subject during

the deposition, opposer never objected to Mr. Rolleston's

testimony or the introduction of the advertisements during the

deposition. Thus, any objection to this evidence is waived,16

16

The basis for opposer's objection is not entirely clear and we

construe it as an objection to the sufficiency of the foundation for

the advertisements, a defect that may have been curable if timely

raised. In any event, notwithstanding that Mr. Rolleston was

testifying as to matters which occurred prior to his employment with

applicant, we find that Mr. Rolleston adequately established the

authenticity of the advertisements as archival records. It is not

clear that the typed list of magazines appearing at the bottom of the

1990 advertisement was prepared as part of that original record.

19

Opp. No. 91157022

and the testimony and advertisements will be considered for

whatever probative value they may have. That said, however,

the probative value of this evidence is very limited. While we

accept that the 1990 advertisement contains a list of

magazines, there is nothing on the face of the document to

indicate when or even whether the advertisement ever actually

appeared in those magazines, and Mr. Rolleston's testimony on

this point is vague and unconvincing. Furthermore, the

copyright notices on the advertisements, while perhaps evidence

of when the ads were created, are not evidence that the ads

were ever actually run. Moreover, even if we assume that both

advertisements appeared in the listed magazines in 1990 and

1992, we have no evidence as to the extent or frequency of

publication and exposure during those years but more important,

those ads would have appeared over ten years ago. There is no

evidence of any continuing effort to separately promote ARDEN

at all since that time. Therefore, even if rights in ARDEN had

at one point in time been established, which is hardly clear in

this case given the presence of ELIZABETH in the letter D,

applicant has not shown that it has maintained or continued to

develop rights in the term.

Nevertheless, as opposer did not object to the evidence on this

basis, we consider the entire document as properly of record.

20

Opp. No. 91157022

In any event, ARDENBEAUTY is not the legal equivalent of

ARDEN. "Simply because a mark is a portion of an earlier mark,

our analysis should not stop there. Instead, our inquiry must

focus on both marks in their entirety to determine whether each

conveys the same commercial impression." Van Dyne-Crotty,

supra at 1869, emphasis in original (rejecting the argument

that the Board should have considered CLOTHES THAT WORK as

simply the abbreviated version of CLOTHES THAT WORK. FOR THE

WORK YOU DO). These marks are not indistinguishable and do not

create the same commercial impression. Where ARDEN refers

generally to any person with that surname, ARDENBEAUTY imparts

additional information about that person, one possessing

certain qualities or characteristics.

Thus, we find that applicant has failed to establish use

of ARDENBEAUTY on cosmetic products prior to the February 5,

2002 filing date of its application and that opposer has

established use of its mark on clothing prior to that date.17

We turn then to the issue of likelihood of confusion. In

making this determination we point out that the fact that

opposer does not have priority of use of its mark on cosmetics,

and may be contractually barred from using the mark on

17

We also note, in this regard, that there is no issue of fundamental

unfairness to applicant in finding in favor of opposer as to

priority. Opposer has used and registered the mark ARDEN B on

clothing and clothing stores with the express consent of applicant,

presumably because applicant believed there would be no likelihood of

confusion with its existing ELIZABETH ARDEN marks.

21

Opp. No. 91157022

cosmetics, does not, as applicant claims, settle the matter.

We must decide whether there is a likelihood of confusion

between opposer's mark ARDEN B as used on the goods and

services for which opposer does have priority, namely women's

clothing and women's clothing stores, and applicant's mark

ARDENBEAUTY for the cosmetic products identified in the

application.

LIKELIHOOD OF CONFUSION

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,

however, two key considerations are the similarities or

dissimilarities between the marks and the similarities or

dissimilarities between the goods and/or services. See

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,

192 USPQ 24 (CCPA 1976). We discuss the relevant factors

below.

Fame or relative strength of opposer's mark

Opposer began using the ARDEN B mark on clothing in 1997.

Opposer first sold the clothing through its WET SEAL clothing

stores at that time. In November 1999, opposer opened its

first ARDEN B store and began selling ARDEN B merchandise

22

Opp. No. 91157022

exclusively through those stores. By February 2001, opposer

was operating about 85 stores in 27 states, with stores located

mostly in shopping malls in major cities such as San Francisco,

Chicago, New York, Miami, Washington, DC and Philadelphia.

Substantially all of the merchandise sold in the ARDEN B stores

is ARDEN B merchandise.

Opposer initially promoted the ARDEN B mark through its

WET SEAL catalogs and later through its ARDEN B catalogues

once the ARDEN B stores opened. Opposer has advertised in

national magazines such as Glamour, InStyle and Cosmopolitan.

The mark is prominently displayed on storefronts and on

clothing labels and packaging for the merchandise.

Opposer has also submitted evidence of sales and

advertising expenditures, although the specific amounts are

confidential. Ms. Nicholas testified as to the advertising

expenses for 1999. She also testified as to sales of ARDEN B

merchandise for each year from 1998 through 2000, and it can be

seen that sales increased dramatically from 1998 to 1999 and

rose again from 1999 to 2000.

The evidence is insufficient to persuade us that opposer's

mark is famous.18 There is no evidence as to how widely or

18

Applicant's assertion that its own mark ARDENBEAUTY is famous is

not supported by the record, and in any event, the fifth du Pont

factor requires consideration of evidence pertaining to "the fame of

the prior mark," which in this case means opposer's mark.

23

Opp. No. 91157022

frequently the product catalogues were distributed; and

insufficient evidence of the extent or frequency of national

exposure of the mark, particularly for the years 2000 and 2001,

and no evidence of national advertising from 2003 forward.

Further, Ms. Nicholas did not testify as to the advertising

expenditures for any years other than 1999, and according to

opposer's advertising budget report for 2000, the amount spent

on advertising dropped significantly in that year. We only

have testimony as to sales figures for a three-year period from

1999-2000. Ms. Nicholas did not testify as to sales for the

more recent years 2001 through 2004.19 The figures for the

three-year period that we do have, while perhaps demonstrating

that opposer achieved some level of success during those years,

do not, however, appear extraordinary on their face and opposer

has not provided a meaningful context for those figures such as

evidence of opposer's market share for the goods. As stated by

the Federal Circuit, "[r]aw numbers of product sales and

advertising expenses may have sufficed in the past to prove

fame of a mark, but raw numbers alone in today's world may be

misleading... . Consequently, some context in which to place

raw statistics is reasonable." Bose Corp. v. QSC Audio Prods.,

19

Opposer submitted over 200 pages of charts containing monthly

breakdowns of sales by individual store and/or piece of merchandise

from September 2000 through December 2003 but did not provide a

figure of its total sales for those years.

24

Opp. No. 91157022

293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). See also

Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1457 (TTAB 1998);

and General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270

(TTAB 1992).

While the evidence is insufficient to demonstrate that

opposer's mark is famous, there is, on the other hand, no

evidence that the term ARDEN is commonly used in the clothing

field or that opposer's mark is otherwise weak or entitled to

anything less than a normal scope of protection. In fact, the

term ARDEN appears to be unique in the field.

Similarity of the marks

In determining the similarity or dissimilarity of marks,

we must consider the marks in their entireties in terms of

sound, appearance, meaning and commercial impression. See du

Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot

Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).

While marks must be considered in their entireties, it is

well settled that "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." In

re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.

Cir. 1985).

25

Opp. No. 91157022

Applicant's mark is ARDENBEAUTY in typed or standard

character form. Opposer's mark is ARDEN B in the stylized form

shown below.

When we compare the two marks in their entireties, giving

appropriate weight to the features thereof, we find that the

marks, while obviously not identical, are similar in sound,

appearance, meaning and commercial impression, and that the

similarities in the marks outweigh their differences.

The marks ARDEN B and ARDENBEAUTY are similar in sound.

The identical first word ARDEN is followed in applicant's mark

by a word that has the same beginning letter and sound as the

"B" following ARDEN in opposer's mark.

As for appearance, although ARDENBEAUTY is presented as a

compound term, the mark clearly would be viewed as being

comprised of two individual words, and the term ARDEN still

makes a visual impact apart from the word BEAUTY. Further the

stylization of ARDEN B is minimal and insufficient to

distinguish the two marks. In any event, because applicant's

mark ARDENBEAUTY is presented in typed or standard character

form, the wording could reasonably be displayed in the same

block letter form as ARDEN B, thereby increasing the visual

similarity of the two marks. See, e.g., Cunningham v. Laser

26

Opp. No. 91157022

Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.

2000) (typed drawings are not limited to any particular

rendition of the mark). See also Phillips Petroleum v. C.J.

Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).

The marks are also similar in meaning and commercial

impression. Both marks consist in significant part of the

identical term, ARDEN. The only evidence of record regarding

the meaning of ARDEN is that of a surname, which would pertain

to both marks.20 While it is unusual for a surname to be

followed by a single letter, as in opposer's mark ARDEN B, the

ARDEN portion of the mark still makes a surname impression.

The name ARDEN is followed in applicant's mark by the word

BEAUTY. That word, as applicant recognizes and the third-party

registrations submitted by applicant show, has a descriptive or

at least a well understood meaning in relation to beauty care

products, and is less significant than ARDEN in creating the

mark's commercial impression. See In re National Data Corp.,

supra. Moreover, the ARDEN name is the first word purchasers

will see or hear when encountering either mark and it is

20

The surname meaning of ARDEN is derived from applicant's evidence

concerning ELIZABETH ARDEN. The fact that ARDEN is a surname does

not automatically render the mark weak or entitled to only a narrow

scope of protection. Hunt Foods & Indus., Inc. v. Gerson Stewart

Corp., 367 F.2d 431, 151 USPQ 350, 352 (CCPA 1966) ("Section

2(d)...does not set forth special rules regarding the registration of

marks involving surnames in determining the issue of likelihood of

confusion"). Furthermore, as we noted earlier, there is no evidence

that ARDEN is commonly used or otherwise weak in the relevant field.

27

Opp. No. 91157022

therefore more likely to have a greater impact on purchasers

and be remembered by them when they encounter the two marks at

different times. See Presto Products Inc. v. Nice-Pak Products

Inc., 9 USPQ2d 1895 (TTAB 1988). The significance of the

letter "B" in the context of ARDEN B is ambiguous. Because its

meaning is not readily apparent, purchasers may view ARDEN B as

simply an abbreviated version of the full term ARDENBEAUTY or

they may assume that ARDEN B and ARDENBEAUTY are slight

variations of the same mark.

Relatedness of the goods and/or services

In our analysis of this factor, we turn first to a

comparison of applicant's cosmetic products, which include

fragrances, and opposer's retail women's clothing store

services.21 It is settled that the likelihood of confusion may

result from the use by different parties of the same or similar

marks in connection with goods, on the one hand, and services

which deal with or are related to those goods, on the other.

See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB

1988) and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB

1983). See also J. Thomas McCarthy, Trademarks and Unfair

21

Applicant contends that because opposer did not allege in the

notice of opposition that the goods and services offered under ARDEN

B are similar or related to those of applicant, opposer has waived

that argument. Opposer is not required to specifically plead every

factual component of a likelihood of confusion claim. It is

sufficient to generally plead the claim as opposer has done in this

case.

28

Opp. No. 91157022

Competition §24:25 (2006) ("[w]here the services consist of

retail sales services, likelihood of confusion is found when

another mark is used on goods which are commonly sold through

such a retail outlet.").

We find that the parties' goods and services are related.

Opposer has introduced evidence that women's and junior's

contemporary clothing chains such as BCBG, BEBE, ANTHROPOLOGIE,

BANANA REPUBLIC, and FOREVER 21, stores which Ms. Nicholas

identified as opposer's competitors, sell both clothing and

collateral products such as fragrances or other beauty care

products. Further, the evidence shows clothing stores sell the

collateral products either under the same marks or variations

of the store marks. For example, BEBE sells perfume under the

mark BEBE and ANTHROPOLOGIE sells lip gloss under the mark

ANTHROPOLOGIE; whereas BANANA REPUBLIC sells bath and shower

scrub under the mark BANANA W REPUBLIC, BCBG sells scented soap

under the mark BCBGirls, and FOREVER 21 sells nail polish under

the mark XXI.

We also find that women's clothing and fragrances are

closely related, complementary products. It is clear that

these products are used together for the same purpose, to

enhance physical appeal and create an overall fashion image.

Applicant's witness, Mr. Rolleston identified at least three

companies, CALVIN KLEIN, CHANEL and BCBG that sell both

29

Opp. No. 91157022

clothing and fragrances under their house marks. Mr. Rolleston

also admitted that a relationship "clearly exists" (Dep., p.

80) between brands of women's clothing and fragrances,

indicating that it is not uncommon for both clothing and

fragrance products to come from the same source, if not under

the same marks.

While the evidence is not overwhelming in quantity, it is

sufficient to persuade us that women's clothing and fragrances

are commercially related goods.22

Customers and cost

The customers for women's clothing and women's clothing

stores would be the same or at least overlap with the customers

who would purchase applicant's fragrances and other cosmetics.

Opposer's target market is young women in their mid-to-late

twenties who are looking for clothing that, as described by Ms.

Nicholas, is "more hip than classic." Dep., p. 75. As there

are no restrictions in the classes of purchasers for

applicant's cosmetics, the purchasers must be deemed to

encompass all the usual purchasers for cosmetics, including the

22

We also note that a number of cases have recognized the

interrelationship between clothing and beauty aids such as fragrance

products and cosmetics, including Edison Brothers Stores Inc. v.

Cosmair Inc., 651 F.Supp. 1547, 2 USPQ2d 1013 (S.D.N.Y. 1987); Helene

Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB

1989); Seligman & Latz, Inc. v. Merit Mercantile Corporation, 222

USPQ 720 (TTAB 1984); Clairol Incorporated v. Topaz Hosiery Mills

Inc., 161 USPQ 545 (TTAB 1969); and Catalina, Inc. v. Catalina

Cosmetics Corporation, 161 USPQ 55 (TTAB 1969).

30

Opp. No. 91157022

young women who purchase opposer's clothing and shop in

opposer's clothing stores. See J & J Snack Foods Corp. v.

McDonald's Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889 (Fed.

Cir. 1991); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198

(Fed. Cir. 1983). In fact, in referring to the "fragrance

profile New Elizabeth Arden Scent" for the product that would

eventually become the ARDENBEAUTY fragrance, Mr. Rolleston

testified that it is "a fragrance for women, women of every age

and every style." Dep., p. 26.

The goods involved in this case are relatively

inexpensive. Opposer sells its ARDEN B clothing at a

"moderate" price point. Dep., p. 74. An ARDEN B product

catalogue shows an average price for dresses ranging from about

$100 to $150. Applicant's identification is not restricted to

any price point or quality and fragrances are certainly

available at a low to moderate price range. Mr. Rolleston

testified that fragrances can be purchased for $45-$50 in

department stores and can be sold for as little as $15 for a

small container in mass retailers such as Wal Mart. We note

that the .5 oz. bottle of perfume from the specialty clothing

store, BANANA REPUBLIC, sells for $12.50.

Given the relatively low cost and the nature of the goods,

the parties’ clothing and fragrances may be subject to impulse

purchase and frequent replacement. It has often been stated

31

Opp. No. 91157022

that purchasers of such products are held to a lesser standard

of purchasing care and, thus, are more likely to be confused as

to the source of the goods. See, e.g., Specialty Brands, Inc.,

748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).

Channels of trade

The record shows that the parties advertise and promote

their goods and services in some of the same magazines, such as

Cosmopolitan, Glamour and InStyle magazines. The record also

shows that cosmetics and clothing are typically sold together

in department stores and mass merchandise stores and that they

are also both sold in smaller retail venues such as specialty

clothing stores.

However, opposer's ARDEN B clothing is sold exclusively in

opposer's own ARDEN B clothing stores, and the ARDEN B stores

sell, almost exclusively, opposer's house brand of clothing.

Opposer has expressed no intention of expanding the sale of its

merchandise to include the stores of others or the brands of

merchandise of others. Applicant argues that because opposer's

goods are only sold in opposer's stores, and since opposer is

prohibited by the parties' agreement from selling cosmetics

under the ARDEN B mark, the parties' clothing and cosmetic

products in this case will never in fact be sold together.

Applicant's statement is true, but not compelling. First,

purchasers are not going to be aware that opposer is prohibited

32

Opp. No. 91157022

from selling cosmetic products under the ARDEN B mark.

Further, where products are closely related, merely because the

products in fact would not be sold together would not

necessarily prevent consumers, when encountering the products

in different outlets, from believing the products come from the

same source. See Freedom Savings and Loan Association v.

Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304

(TTAB 1984) ("It is not necessary that goods be competitive or

be sold together or through the same outlets if they can be

shown to be related in some manner that would suggest to

persons encountering them, even at different locations,

sources, or offices a likelihood of common sponsorship").

The respective products in this case are closely related

and the customers for these closely related products are the

same. The young women who shop in department stores and who

would purchase ARDENBEAUTY fragrances would also shop at

opposer's ARDEN B stores and purchase ARDEN B clothing. Also,

as discussed earlier, the evidence shows that it is not unusual

for a company to use a variation of its house mark when

extending its clothing line to fragrances and other cosmetics.

Purchasers would be accustomed to seeing these variations of

house marks and they are therefore likely to believe that ARDEN

B and ARDENBEAUTY identify different but related product lines

from the same source.

33

Opp. No. 91157022

In addition, the two products may not even be purchased at

the same time. Keeping in mind that the parties' clothing and

fragrances are relatively inexpensive, and may be subject to

purchase on impulse, consumers who had previously purchased

opposer's ARDEN B apparel in one of opposer's ARDEN B stores,

upon encountering applicant’s perfume, under the mark

ARDENBEAUTY in a department store, are unlikely to give the

matter great thought, but simply assume because of the

products' complementary nature, that they come from or are in

some way connected with the same company. See Specialty

Brands, Inc. v. Coffee Bean Distributors, Inc., supra.

Market interface

We turn finally to the tenth du Pont factor, "the market

interface between applicant and the owner of a prior mark"

which includes consideration of "(b) agreement provisions

designed to preclude confusion, i.e., limitations on continued

use of the marks by each party..." du Pont supra at 567. In

addition to its claim of priority based on the parties'

settlement agreement, which we have found unpersuasive,

applicant also argues that the settlement agreement "negates

any potential likelihood of confusion" between the two marks.

Brief, p. 3. Applicant has not explained how the agreement

"negates" the likelihood of confusion and we do not find that

it does. As we noted earlier, the agreement contains no

34

Opp. No. 91157022

provisions regarding opposer's rights in the term ARDEN alone

or apart from ELIZABETH ARDEN in connection with fragrances and

cosmetics; and nothing precluding opposer from using the mark

ARDEN B, at least in its present form, or from asserting its

rights in this mark for clothing and clothing stores against

applicant. In fact, if anything, the agreement implies that

there would be a likelihood of confusion between certain

"ARDEN" marks for fragrance and cosmetic products on the one

hand, and for clothing and clothing store services on the

other.23

For the reasons stated above, we find that the

contemporaneous use by the parties of ARDEN B and ARDENBEAUTY

in connection with the respective goods and/or services would

be likely to cause confusion.

If applicant should ultimately prevail in any appeal of

this decision, we address the question, noted earlier, of

whether the application would in any event require restriction.

23

Although applicant does not argue this point, we note that there

is no evidence of actual confusion between opposer's and

applicant's marks. However, we consider this factor to be

neutral. As noted earlier, applicant's mark has been in use for a

relatively short period of time and we have insufficient evidence

of the nature and extent of applicant's use during the period of

contemporaneous use. In any event, evidence of actual confusion is

not required in order to establish likelihood of confusion. See

Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).

35

Opp. No. 91157022

LACK OF BONA FIDE INTENT TO USE

Opposer argues that Mr. Rolleston "testified as to the

particular products on which Applicant intended to use" the

mark; that the original intention was to use the mark only on

the goods listed in Rolleston exhibit 2 ("new fragrance fact

sheet" and "SKU"24 information) and exhibit 31 (total number and

value of products shipped "for period through January 2005"),

namely fragrance, body lotion, creme cleanser, creme deodorant,

deodorant spray, shower gel, posters, shopping bags and scented

cards; and that, in particular, applicant had no bona fide

intent to use the mark on shampoo or candles. It is opposer's

contention that Mr. Rolleston "clearly admitted" that

ARDENBEAUTY was intended for use on fewer than all the goods in

the application.

To begin with, candles are not even included in the

identification of goods. Further, opposer has not shown, prima

facie, by a preponderance of the evidence that applicant lacked

a bona fide intent to use the mark on shampoo or on any of the

other items listed in the identification of goods. The only

evidence which pertains to this issue is the testimony by Mr.

Rolleston (pp. 84-88):

Q. I would like you to look at Rolleston Exhibit 2 and

also Rolleston Exhibit 31. First of all with respect to

24

The SKU refers to a number associated with a specific product type.

36

Opp. No. 91157022

Exhibit No. 2, you testified that this included a listing

of products under various SKUs.

A. Yes, indeed.

Q. And were these the products you intended to sell under

the new brand when you were considering launching a new

brand?

A. These were the basic stock products that we were

considering which is the fundamental line that we put

together.

Q. What other products were you intending to sell under

the trademark, under the new brand?

A. Everything that's listed here.

Q. Anything else that's not listed there?

A. Yes. Eventually we would put these things together in

gift sets, we eventually would make new product types with

it. That's all part of what we do.

With regard to shampoos, Mr. Rolleston testified:

Q. Did you have plans at that time say in early 2002 to

extend the brand, the new brand, to other products?

A. When you say "to other products"?

...

Q. How about shampoos?

A. We might have considered doing it at some point in

time. But at that point I hadn't decided to do a shampoo

or not do a shampoo. I mean, it wouldn't preclude me from

it because of the nature of formulations. That's a

category that I'm familiar with.

...

Q. Did you take any steps to launch ardenbeauty

shampoo?

A. No. I had a body wash.

37

Opp. No. 91157022

With regard to "color" cosmetic products which, according to

Mr. Rolleston, include lipsticks, eyeshadows and foundations,

Mr. Rolleston testified:

Q. What about colors, were you planning to sell

ardenbeauty colors?

A. What I had done were the color stories as I had used

my existing inventories to create color pallets to work

with Catherine Zeta Jones [applicant's spokesperson for

the new ELIZABETH ARDEN product] so that you can recreate

our look through existing inventory.

...

Q. Did you plan to introduce ardenbeauty colors?

A. No. But that wouldn't have precluded me from doing a

color story. I do those all the time. ... But I didn't

specifically plan on creating an ardenbeauty color story

at the time that I created the fragrance. No, I did not.

When Mr. Rolleston was asked "How about an ardenbeauty

potpourri?" he stated "We've made potpourris in the past" and

then referred to his answer to a previous question about

candles wherein he responded that he "would have to go back and

ask one of the girls who works for me who does that. That

could very easily have been considered."

First, opposer never establishes that Mr. Rolleston would

be the sole person in the company responsible for making the

decisions regarding the marketing plans for those products or

the only person to have knowledge about those plans. In fact,

Mr. Rolleston's testimony shows with regard to at least certain

38

Opp. No. 91157022

products, that he clearly was not the only person involved in

the decision-making process. In addition, opposer did not ask

questions which fully explored applicant's actual intent.

Merely because applicant may not have taken steps to actually

launch or introduce a particular product does not mean that

applicant otherwise had no intention to develop or market the

product. Also, many of Mr. Rolleston's responses are ambiguous

and opposer did not follow through on them. For example, it is

unclear what Mr. Rolleston meant by his statement that

applicant planned to "make new product types," or by his

statement that he had not decided "to do a shampoo or not do a

shampoo." Mr. Rolleston's testimony regarding applicant's

plans for the "color stories" is also unclear, as is his

testimony as to when or if the color stories were in fact

created. On the other hand, it is clear from Mr. Rolleston's

testimony that applicant had the capacity to market and/or

manufacture shampoos and color products, having produced them

in the past under different marks, which would tend to

affirmatively rebut any claim by opposer regarding applicant's

intent.

Under the circumstances, the evidence falls far short of

demonstrating by a preponderance of the evidence that applicant

lacked a bona fide intention to use the mark in connection with

any of the identified products.

39

Opp. No. 91157022

Decision: The opposition is dismissed on the ground of

lack of bona fide intention to use the mark, and sustained on

the ground of likelihood of confusion.

40