“Whether there is evidence of intent to trade on the goodwill of another is a factor to be considered, but the absence of such evidence does not avoid a ruling of likelihood of confusion.”
How later courts described this case
- “Whether there is evidence of intent to trade on the goodwill of another is a factor to be considered, but the absence of such evidence does not avoid a ruling of likelihood of confusion.”
Written by the judges who cited it.
The opinion
THIS OPINION
With ref
IS A PRECEDENT OF THE
TTAB
Hearing: Mailed:
8/2/11 3/20/12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
L’Oreal S.A. and L’Oreal USA, Inc.
v.
Robert Victor Marcon
_____
Opposition No. 91184456
to application Serial No. 76596736
filed on June 9, 2004
_____
Robert L. Sherman of Paul, Hastings, Janofsky & Walker for
L’Oreal S.A. and L’Oreal USA, Inc.
Robert Victor Marcon, pro se.
______
Before Quinn, Taylor and Shaw,
Administrative Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
Robert Victor Marcon (“applicant”) filed an application
to register the mark L’OREAL PARIS (in typed form) for “aloe
vera drinks” (in International Class 32). The application
includes a statement of a bona fide intent to use the mark
in commerce, and a claim of priority, pursuant to Section
44(d) of the Trademark Act, 15 U.S.C. § 1126(d), based on
Canadian application number 1202383 filed on December 11,
2003.
Opposition No. 91184456
L’Oreal S.A. and L’Oreal USA, Inc. (together “opposer”)
opposed registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant’s
mark, when applied to applicant’s goods, so resembles
opposer’s previously used and/or registered L’OREAL and
L’OREAL PARIS marks for a full range of cosmetics, skin
care, and hair care products, some that include aloe vera as
an ingredient, as well as for a variety of services, as to
be likely to cause confusion. Opposer also alleges that its
famous marks are likely to be diluted by registration of
applicant’s mark. Lastly, by way of an amended notice of
opposition, opposer asserts that applicant lacks a bona fide
intent to use his mark in commerce.
Applicant, in his answers to both the original notice
of opposition and the amended notice of opposition, denied
the salient allegations comprising the claims for relief.1
The record comprises the pleadings; the file of the
opposed application; testimony, with voluminous related
exhibits, taken by opposer;2 certified copies of opposer’s
pleaded registrations and pending applications introduced by
1
The Board, on November 10, 2009, entered default judgment
against applicant in view of his failure to timely respond to the
notice of default. Applicant then filed a motion to vacate the
judgment. In an order dated January 14, 2010, the Board, while
expressing its “puzzlement” over the reasons for applicant’s
failure to timely file an answer, nevertheless found that the
failure was inadvertent, and was neither willful nor in bad
faith. Accordingly, the Board vacated the default judgment.
2
The parties stipulated to testimony by declaration. Trademark
Rule 2.123(b). See TBMP § 703.01(b) (3d ed. 2011).
2
Opposition No. 91184456
way of opposer’s notice of reliance; and various documents,
including third-party registrations, excerpts from printed
publications and third-party websites, official records
(including documents relating to applicant’s other filings
with the Office), and applicant’s responses to opposer’s
discovery requests,3 all submitted by way of applicant’s
notice of reliance. Both parties filed briefs.4 The Board
held an oral hearing at which only opposer’s counsel
appeared.
By way of background, during examination of the
application, the examining attorney issued a final refusal
3
Responses to interrogatories and requests for admission may be
made part of the record by only the inquiring party. Trademark
Rule 2.120(j). However, opposer did not object to applicant’s
improper introduction of such evidence, but rather treated the
evidence as being of record. Accordingly, we have considered
this evidence as having been stipulated into the record. See
Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d
1883, 1884 n.3 (TTAB 1993). See also TBMP § 704.10.
4
Applicant’s thirty-five page brief on the case is single-
spaced. Trademark Rule 2.126(a)(1) requires that the brief be
double-spaced; and Trademark Rule 2.126(b) provides that a main
brief on the case shall not exceed fifty-five pages in length in
its entirety.
Where a brief exceeds the page limit, the Board generally will
not consider the brief. See American Optical Corp. v. Atwood
Oceanics, Inc., 177 USPQ 585 (Comm’r 1973) (brief which was too
long and not in proper form was not considered). See generally
TBMP § 801.03. As opposer points out (Reply Brief, p. 1, n.1),
it is unknown whether the brief, if double-spaced, would be
within the page limitation as set forth in Trademark Rule
2.128(b). Indeed, we cannot be certain that the single-space
format was meant as a subterfuge to circumvent the rule regarding
the length of the brief. Cf. Consorzio del Prosciutto di Parma
Sausage Products Inc., 23 USPQ2d 1894, 1896 n.3 (TTAB 1992)
(warned that single-spaced footnotes containing substantial
discussion may be viewed as a subterfuge to avoid page limit).
In any event, applicant’s brief is single-spaced and, thus, the
brief is not in technical compliance with Trademark Rule
3
Opposition No. 91184456
to register applicant’s mark under Section 2(a) of the
Trademark Act, 15 U.S.C. § 1052(a), on the ground that it
falsely suggests a connection with opposer. Applicant
appealed the refusal. The Board, in an unpublished opinion,
reversed the refusal to register, finding that the examining
attorney did not meet her burden of proving that L’OREAL is
of sufficient fame or reputation to consumers in the United
States that a connection between applicant’s mark and
opposer would be presumed. In making its determination, the
Board noted the limited resources of the Office in acquiring
evidence, and also “hasten[ed] to point out” that a
“different and more complete record, such as might be
adduced in an inter partes proceeding” may well cause the
Board to reach a different result under Section 2(a). When
the application was published in the Official Gazette,
opposer filed its notice of opposition, although Section
2(a) is not one of the alleged claims.
The record shows that opposer is a worldwide-leading
cosmetics company in terms of revenue, product volume and
brand recognition, with a significant presence in the United
States. Opposer introduced six of its registrations; the
two registered marks closest to applicant’s mark and goods
are the following: L’OREAL (typed) for “hair colorings,
2.126(a)(1). Nevertheless, we have exercised our discretion and
have considered applicant’s brief.
4
Opposition No. 91184456
color rinses, hair bleaches, color developers, color
intensifiers, and hair conditioners” (in Class 3);5 and
L’OREAL (stylized) for “rouge, face cream, hair lotion, hand
cream, eye shadow, face lotion, nail polish, suntan oil and
face powder” (in Class 3).6 Opposer also has used its
L’OREAL PARIS common law mark on a variety of cosmetics and
personal care products. Opposer typically uses the mark
L’OREAL PARIS in the form shown below.
STANDING
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of its
L’OREAL marks of record; in addition, opposer demonstrated
its use of the mark L’OREAL PARIS. Thus, opposer has shown
that it is not a mere intermeddler. Opposer’s use and/or
registration of its marks establish that opposer has
5
Reg. No. 661746, issued May 13, 1958; third renewal.
6
Reg. No. 540541, issued April 3, 1951; fourth renewal. When a
registration owned by a party has been properly made of record,
and the status of the registration changes between the time it
was made of record and the time the case is decided, the Board,
in deciding the case, will take judicial notice of, and rely on,
the current status of the registration, as shown by the records
of the Office. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d
1187, 1192 n.9 (TTAB 2007). See TBMP § 704.03(b)(1)(A). Thus,
we have checked Office records to confirm that opposer renewed
this registration.
5
Opposition No. 91184456
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
PRIORITY
In view of opposer’s ownership of valid and subsisting
registrations of its L’OREAL and L’OREAL-formative marks,
opposer’s priority is not in issue with respect to the goods
identified in those registrations. King Candy, Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Further, opposer established prior common law
rights in its mark L’OREAL PARIS in connection with a
variety of cosmetics and personal care products.7 Opposer
continuously has used the mark L’OREAL PARIS since long
prior to the Section 44(d) priority filing date of the
involved application, which is the earliest date applicant
is entitled to claim.8
7
Applicant focused on only three of opposer’s registered marks,
contending, as best we understand, that those are the only marks
that “predate” applicant’s mark. What applicant seems to ignore
is that there can be no priority dispute when an opposer properly
introduces its registrations into the record, and the applicant
fails to file a counterclaim to cancel them; and that opposer
also has established prior common law use of the mark L’OREAL
PARIS.
8
Applicant’s allegation that opposer has abandoned its L’OREAL
PARIS common law mark is not supported by the record.
6
Opposition No. 91184456
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 likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). Opposer must establish that there is
a likelihood of confusion by a preponderance of the
evidence. In any likelihood of confusion analysis, however,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors,
and the other relevant du Pont factors in the proceeding now
before us, are discussed below.
FAME
We begin with this du Pont factor, on which opposer has
introduced a significant amount of evidence. Fame of the
prior mark plays a dominant role in likelihood of confusion
cases featuring a famous mark. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose
Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed.
Cir. 1992). Because of the extreme deference accorded to a
famous mark in terms of the wide latitude of legal
7
Opposition No. 91184456
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting fame to clearly prove it. Lacoste Alligator
S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); and
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Lisa Capparelli, opposer’s vice president, Consumer
Products Division, Integrated Marketing Communications,
testified about the extent of use of opposer’s L’OREAL and
L’OREAL PARIS marks. Opposer (through L’Oreal USA, Inc., a
wholly-owned subsidiary of L’Oreal S.A. and its exclusive
licensee in the United States) has sold cosmetic and
personal care products under the L’OREAL and L’OREAL PARIS
marks in the United States for over fifty years. Opposer
has sold these products at drug stores, supermarkets and
mass merchandisers throughout the United States, including
Walmart, Target, Kmart, Rite-Aid, Walgreens, CVS and Kroger,
and through online retail websites such as
www.drugstore.com.
As early as 1980, annual U.S. sales under the L’OREAL
and L’OREAL PARIS marks stood at over $200 million, tripling
to $600 million by 1984. Sales under the L’OREAL PARIS mark
for the period 2000 through 2003 were approximately $4
billion, with sales increasing for the period from 2004
through 2009 to $7 billion. Current annual sales of
8
Opposition No. 91184456
products sold under the L’OREAL PARIS mark are approximately
$1.2 billion. Several of opposer’s product lines, all sold
under the L’OREAL PARIS mark, were each among the top ten by
market share in their respective product categories; in
2004, the year that applicant filed his application, these
product lines alone generated more than $600 million in
sales. Opposer’s skin care products sold under the mark
L’OREAL PARIS rank as the third-best selling mass skin care
brand in the United States.
Opposer supports its L’OREAL and L’OREAL PARIS marks
with substantial advertising and promotional expenditures.
For the years 2000 through 2004, opposer spent more than
$200 million annually to advertise products under the
L’OREAL PARIS mark in the United States. For each of the
years 2005 through 2009, opposer’s advertising expenditures
to promote its L’OREAL PARIS mark in the United States
increased to over $300 million. Opposer’s promotional
expenditures consistently rank among the highest in the
United States; for the past decade, opposer has been among
the top thirty national advertisers, as ranked by the annual
report of “100 Leading National Advertisers” in Advertising
Age magazine.
Opposer’s television commercials have run during
broadcasts of the Super Bowl, Project Runway, the Academy
Awards, the Golden Globes, and the Screen Actors Guild
9
Opposition No. 91184456
Awards. Opposer’s advertising for its L’OREAL and L’OREAL
PARIS marks have featured famous spokespersons, including
Scarlett Johansson, Beyonce Knowles, Claudia Schiffer,
Penelope Cruz and Andie MacDowell.
In connection with its promotional efforts, opposer has
engaged in significant and well-publicized corporate
fundraising. Opposer has partnered with the Ovarian Cancer
Research Fund, raising more than $18 million; with UNESCO in
the “For Women In Science Program”; and with Glamour
magazine’s “Women of the Year” awards.
Opposer’s substantial sales revenues and promotional
expenditures have paid off in significant brand recognition
and goodwill for its L’OREAL and L’OREAL PARIS marks.
Interbrand Corporation and Business Week magazine
consistently rank opposer in their annual report of the
world’s “100 Top Brands.”
Opposer and its marks have enjoyed significant
unsolicited media coverage in national publications such as
The New York Times, The Wall Street Journal, and The
Washington Post. Advertising Age, in an article titled
“Sharp Print, Sharp Colors Score for L’Oreal,” noted that
opposer “succeeded in building an upscale brand image among
mass brands,” and in the process became “the largest spender
in the beauty category.”
10
Opposition No. 91184456
Opposer has commissioned a “Corporate Image Study”
every year from 2001 through 2007; the study covers a
variety of consumer factors, including brand awareness.
Mark Brooks, opposer’s vice president, Consumer Products
Division, Consumer & Market Intelligence, testified about
the results. The specific numbers of the studies are
designated as “confidential,” so we are not at liberty to
disclose them. What we can say is that the brand awareness
and brand image numbers are very impressive, and of a
magnitude that would be the envy of any business entity in
this country.
Numerous products sold under the L’OREAL PARIS mark
have won awards or commendations from publications such as
Cosmopolitan, Elle, Glamour, Good Housekeeping, Shape and
Vogue.
Despite opposer’s evidence of fame, applicant makes the
incredible statement that this factor “strongly supports the
[applicant],” arguing that opposer’s fame is primarily
associated with its cosmetic products. (Brief, p. 24).
Applicant’s argument that opposer is famous only with
respect to its cosmetic products, and that this factor
“strongly supports” applicant is incorrect. Assuming that
applicant is correct that opposer is famous (only) for its
cosmetic products, the effect of such fame is that customers
are more likely to presume an association with opposer
11
Opposition No. 91184456
whenever the same or similar mark is used on other products,
even if they are not as closely related as might otherwise
be required. In other words, a finding that a mark enjoys
significant fame expands the scope of protection which might
be accorded a lesser-known mark. Moreover, as a matter of
law, the fame of a registered or previously used mark can
never support a junior party; this du Pont factor can only
support the senior party. Kenner Parker Toys, Inc. v. Rose
Art Industries, Inc., 22 USPQ2d at 1456.
Applicant makes two other ill-fated attempts to
diminish the distinctiveness of opposer’s marks. The first
centers on what appears to be applicant’s argument that
“L’Oreal” and “Paris” are surnames and, in support thereof,
applicant submitted evidence showing that an extremely
modest number of Americans have a surname of “Loreal,”
“Oreal” or “Paris.” The second argument is that opposer’s
L’OREAL PARIS mark is primarily geographically descriptive.
Suffice it to say, these arguments are entirely
unpersuasive. Opposer’s record establishing fame
essentially stands unrebutted by applicant.
Based on the impressive record before us, we find that
opposer’s marks L’OREAL and L’OREAL PARIS are famous for
cosmetics and personal care products such as makeup, skin
care, hair care, and hair color, among others. “When an
opposer’s trademark is a strong, famous mark, it can never
12
Opposition No. 91184456
be of little consequence.” Recot Inc. v. M.C. Becton, 54
USPQ2d at 1897, quoting Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284
(Fed. Cir. 1984). The Federal Circuit has stated repeatedly
that there is no excuse for even approaching the well-known
trademark of a competitor inasmuch as “[a] strong
mark...casts a long shadow which competitors must avoid.”
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 22
USPQ2d at 1456.
We find the du Pont factor focusing on fame weighs
heavily in favor of finding a likelihood of confusion
herein.
THE MARKS
We must compare opposer’s marks to applicant’s mark in
their entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005). The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
13
Opposition No. 91184456
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 1975).
To state the obvious, applicant’s L’OREAL PARIS mark is
identical to opposer’s L’OREAL PARIS mark in sound and
appearance; further, there is no indication that applicant’s
proposed use would result in his mark having a different
connotation or commercial impression than the mark as used
by opposer.
In addition, applicant’s L’OREAL PARIS mark is
substantially similar to opposer’s L’OREAL mark. It is well
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this feature in determining the commercial impression
created by the mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.”). In applicant’s mark,
the term L’OREAL is the first component, and purchasers in
general are inclined to focus on the first word or portion
in a trademark. Presto Products, Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the
14
Opposition No. 91184456
first part of a mark which is likely to be impressed upon
the mind of a purchaser and remembered”). See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1692. Given the geographically
descriptive nature of the term PARIS, purchasers are more
likely to remember the L’OREAL portion of applicant’s mark,
and would rely upon this term to identify, call for, or
refer to the goods. This term is identical to the entirety
of opposer’s L’OREAL mark. In sum, the marks L’OREAL and
L’OREAL PARIS are highly similar in sound, appearance,
meaning and overall commercial impression.
The identity or substantial similarity between the
marks weighs heavily in opposer’s favor.
THIRD-PARTY USES
Applicant’s evidence of use of “O’real” with a fried
chicken mix, or as a given name “Oreal” is unpersuasive.
“O’real” and “Oreal” have different commercial impressions
from L’OREAL; whether consumers can distinguish between
opposer’s L’OREAL mark and the third-party uses of either
“O’real” or “Oreal” for the respective goods does not mean
that they will distinguish between the parties’ identical or
substantially similar marks L’OREAL and L’OREAL PARIS
involved herein.
In a related argument, applicant points to the co-
existence of third-party registrations of identical marks,
15
Opposition No. 91184456
owned by different parties, for arguably related goods
(e.g., TRIUMPH, SPITFIRE and TEMPEST). Applicant’s attempt
to equate those co-existing registrations, for each of those
marks, with the situation herein is not persuasive. Suffice
it to say that each case must be decided on its own set of
facts.
This factor is neutral in our analysis.
THE GOODS
It is well established that the goods of the parties
need not be similar or competitive, or even offered through
the same channels of trade, to support a holding of
likelihood of confusion. Further, “the greater the degree
of similarity in the marks, the lesser the degree of
similarity that is required of the products or services on
which they are being used in order to support a holding of
likelihood of confusion.” In re Concordia International
Forwarding Corp., 222 USPQ 352, 356 (TTAB 1983). Where, as
in this case, applicant’s mark is identical to opposer’s
L’OREAL PARIS mark, there need only be a viable relationship
between the goods to find that there is a likelihood of
confusion. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993) (contemporaneous use of
identical or nearly identical marks can lead to the
assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
16
Opposition No. 91184456
related”); and In re Thor Tech Inc., 90 USPQ2d 1634, 1636
(TTAB 2009). The issue here, of course, is not whether
purchasers would confuse the parties’ goods, but rather
whether there is a likelihood of confusion as to the source
of the goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Although the record also establishes opposer’s prior
rights in its marks as used in connection with various
services, we will focus our attention, as have the parties,
on a comparison of opposer’s cosmetics and personal care
products to applicant’s aloe vera drinks.
At first glance, cosmetics and beverages might not
appear to be inherently related. But, as discussed below,
opposer has submitted substantial evidence to show several
reasons for finding such goods to be related. The record
includes the declaration of Natalie Furman, an attorney at
opposer’s law firm, and related exhibits. Ms. Furman
attests to her firm’s Internet search, and the results
showing that the same companies offer both cosmetics and
food/beverage products. (Furman dec., Ex. J).9 Exhibit J
includes excerpts of third-party websites and registrations
which, in combination, show that a single entity may offer
9
The introduction of Internet materials as exhibits to testimony
is, of course, appropriate. It should be noted that the Board,
in Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB
2010), changed its practice regarding Internet evidence, holding
that a document obtained from the Internet may be admitted into
evidence pursuant to a notice of reliance in the same manner as a
17
Opposition No. 91184456
both cosmetic and beverage products under the same mark.
Examples include the following: SKINCOLA (RN 3025036 for
hydrating facial mist and face soap, and RN 2916930 for
mineral and aerated waters); BORBA (RN 3083944 for
cosmetics, and use in connection with drinkable “clarifying
skin balance” water); EVIAN (RNs 2904034, 2821896 and
2822102 for cosmetics and dietary drink mix, and fruit and
vegetable juice, and spring and aerated waters); AQUAFINA
(RN 1917411 for soft drinks, mineral water, and aerated
water, and RN 3214155 for lip gloss, RN 3170128 for
exfoliants for lips, RN 3360445 for skin and face
moisturizers, and RN 3591147 for eye cream, facial cleansers
and skin cleansers); PEPSI TWIST (RN 3170159 for lip balm,
and use for soft drinks); MOUNTAIN DEW (RN 3353706 for lip
balm, and use for soft drinks); and SNAPPLE (RN 3233387 for
personal care products namely body scrub, body wash, and
soap for the body, and use for beverages). With respect to
some of these examples, “[t]hird-party registrations which
cover a number of differing goods and/or services, and which
are based on use in commerce, although not evidence that the
marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest
printed publication in general circulation in accordance with
Trademark Rule 2.122(e). See TBMP § 704.08(b).
18
Opposition No. 91184456
that such goods or services are of a type which may emanate
from a single source.” In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed.
Cir. 1988). See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
Opposer made of record an article discussing the trend
of “traditional skin care lines improving looks with dietary
supplements.” (www.entrepreneur.com):
Cosmetic and skin care companies both in
the U.S. and abroad are beginning to
address the older consumer’s desire for
product lines that marry cosmeceuticals
and nutraceuticals to smooth and improve
skin. Avon, the aptly monikered
“company for women,” has been fully
vested in the idea of beauty from the
inside out. “Women’s health and well-
being is a natural extension of Avon’s
beauty focus,” said Avon CEO Andrea Jung
at the time of Avon’s Wellness launch.
“Our research around the world shows
that women today are vitally concerned
about inner health as well as outer
beauty.”
Two new additions to the Avon Wellness
line are Healthy Remedies Balancing
Lotion, and VitAdvance AquaNew. One you
smooth on, the other, you swallow.
*****
Skin care lines widely known in the U.S.
for their topical anti-aging products
are prospering in Europe and Asia with
product lines that focus on promoting
beauty from within.
*****
L’Oreal, Paris, France, joined forces
with Nestle, Vivey, Switzerland, almost
19
Opposition No. 91184456
two years ago to...develop nutritional
supplements with a cosmetic bent...[to]
“improve the quality of skin, hair and
nails by supplying nutrients essential
to their physiology.”
*****
Both Lynn Laboranti, M.S., R.D., of the
Professional Education Department of
Pharmavite, and Dr. Amy Newburger, a New
York City, NY-based dermatologist and
the author of Looking Good at Any Age,
shared their thoughts on midlife women,
skin care and the wisdom of combining
nutraceuticals and cosmeceuticals to
promote healthy skin. “I believe that
today’s woman is looking for a holistic
solution. Vitamins and topical
solutions can work synergistically to
make women look and feel their best,”
stated Ms. Laboranti.
Ms. Capparelli testified that opposer is an innovator
in the personal care market, and that consumers have come to
expect new and different types of products under the L’OREAL
and L’OREAL PARIS marks. Other evidence shows that Procter
& Gamble has expanded its “well-known skin care line OLAY”
to a vitamin line under the identical mark OLAY to “support
beauty from within.” (www.entrepreneur.com).
Additional evidence that the parties’ goods are related
is the common use of aloe vera as an ingredient in cosmetics
and personal care products. According to Ms. Capparelli,
consumers are aware that aloe or aloe vera is often
prominently listed as a beneficial ingredient in
moisturizers and other skin care products. Opposer itself
uses aloe vera and other botanicals in a number of its
20
Opposition No. 91184456
products. The connection between aloe and cosmetics is
further reflected by numerous third-party registrations of
ALOE-formative marks for cosmetic products, many of which
are identified as containing aloe vera as an ingredient.
As shown by the record, companies have marketed
cosmetics and beverages under the same mark; further, aloe
vera is commonly used as an ingredient in cosmetic and
personal care products. The evidence also shows the growing
relationship between “inner health” products (e.g.,
beverages and nutritional supplements) and “outer beauty”
products (e.g., cosmetics and personal care products).
Accordingly, we find that the parties’ goods are
sufficiently related for purposes of our likelihood of
confusion analysis, and this factor weighs in favor of
opposer.
TRADE CHANNELS, PURCHASERS and CONDITIONS OF SALE
Inasmuch as there are no restrictions in applicant’s
identification and the identifications in opposer’s
registrations, it is presumed that the identifications
encompass all goods of the type described, that they move in
all normal trade channels for such goods, and that they are
available to all potential consumers for such goods. Paula
Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973); and Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006). The
21
Opposition No. 91184456
normal trade channels for cosmetics and beverages include
supermarkets, drug stores and mass merchandisers. Further,
with respect to common law rights in its mark L’OREAL PARIS,
opposer has shown that its goods actually are sold in these
same types of stores. Thus, the trade channels for the
parties’ goods overlap.
We also presume that applicant’s drinks will be sold to
the same classes of purchasers as opposer’s goods, including
ordinary consumers. Applicant’s contention that purchasers
of opposer’s products are “quite sophisticated and
meticulous” is not supported by any evidence. (Brief, p.
22). In this connection, we note that opposer’s
identifications of goods are not restricted as to price and,
therefore, we must presume that opposer’s cosmetics include
ones that are inexpensive.
Products such as opposer’s cosmetics and personal care
products, as well as nutritional drinks, tend to be
relatively inexpensive and may be the subjects of impulse
purchases. See Wet Seal Inc. v. FD Management Inc., 82
USPQ2d 1629, 1640-41 (TTAB 2007). “When products are
relatively low-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.” Recot Inc. v. M.C. Becton, 54 USPQ2d at
1899.
22
Opposition No. 91184456
These factors relating to the similarity between the
trade channels, classes of purchasers and conditions of sale
weigh in opposer’s favor.
BAD FAITH ADOPTION
Under the thirteenth du Pont factor, evidence of
applicant’s bad faith adoption of his mark is relevant to
our likelihood of confusion analysis. L.C. Licensing Inc.
v. Berman, 86 USPQ2d 1883, 1890 (TTAB 2008). See J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is
evidence of intent to trade on the goodwill of another is a
factor to be considered, but the absence of such evidence
does not avoid a ruling of likelihood of confusion.”);
Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212
USPQ 641, 643 (CCPA 1982) (Nies, J., concurring opinion)
(“The absence of intent to confuse would not preclude a
finding of likelihood of confusion, but had such intent been
shown (which it has not), it would be a factor to weigh
against the newcomer.”); and Lever Bros. Co. v. Riodela
Chemical Co., 41 F.2d 408, 5 USPQ 152, 154-55 (CCPA 1930)
(“[W]e have a right, in determining the question of
likelihood of confusion or mistake, to consider the motive
in adopting the mark as indicating an opinion, upon the part
of one vitally interested, that confusion or mistake would
likely result from the use of the mark.”).
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Opposition No. 91184456
We agree with opposer’s accusation that “applicant has
a history and pattern of filing intent-to-use applications
for a disparate range of products for which he has no
industry-relevant experience, and where the applied-for
marks are identical to some of the best known, previously
registered trademarks in the country.” (Brief, p. 24).10
The sixteen applications were based on intent to use and/or
foreign filings; in all but one case (HEINEKEN), the
applications were abandoned. Applicant sought to register
the following marks: HEINEKEN for meat juices (SN 78288366,
currently suspended pending receipt of the foreign
registration); JACK DANIEL’S for cigars, cigarettes and
chewing tobacco (SNs 76596734 and 78288359); CHANEL for
scented stationery and greeting cards (SN 76596733);
SOUTHERN COMFORT for various beverages such as beer, water
and juices (SN 78288368); BAYER for non-medicated mouthwash,
gargle and breath fresheners (SN 76596737); ABSOLUT (SN
78288367) and ABSOLUT WATER (SN 78230510) for various
beverages such as beer, water and juices; FINLANDIA for
various beverages such as water, juices and flavored drinks
(SN 78288365); COORS for meat juices and meat juice
concentrates (SN 78288364); BUDWEISER for various beverages
10
Opposer also refers to these third-party trademarks as “well-
known or famous,” a characterization not disputed by applicant.
(Brief, p. 25). Thus, for purposes of this decision, we will
presume that the marks are “well-known.”
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Opposition No. 91184456
such as water, juices and non-alcoholic beverages (SN
78288361); DOM PERIGNON for meat juices and broth (SN
78288358); NESCAFÉ for alcoholic beverages (SN 76596735);
EVIAN for distilled spirits, ice cream, sherbet, and frozen
confections (SN 76577011); NESTLÉ for vitamins, analgesics
and alcoholic beverages (SN 76596738); and TIM HORTONS for
alcoholic beverages (SN 76577010). (Opposer’s notice of
reliance, Exs. C1-C18).
Applicant’s demonstrated pattern of filing applications
to register various well-known marks convinces us that
applicant’s adoption of the L’OREAL PARIS mark was in bad
faith, with the intention to trade off of opposer’s famous
L’OREAL and L’OREAL PARIS marks.11 Such bad faith is strong
evidence that confusion is likely, as such an inference is
drawn from the imitator’s expectation of confusion. L.C.
Licensing Inc. v. Berman, 86 USPQ2d at 1891. We hasten to
add that, even if there were no bad faith adoption by
applicant, we would have no hesitation in finding a
likelihood of confusion between the parties’ marks.
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1640
(TTAB 1988) (lack of intent to trade on another’s mark will
11
We caution that our consideration of this pattern is
inextricably linked to the unique facts of this case and do not
suggest that it would usually be appropriate for a party alleging
bad faith adoption of a mark to take extensive discovery about
other, unrelated applications filed by the applicant. In this
particular case, the demonstrated pattern is material.
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Opposition No. 91184456
not prevent a finding of likelihood of confusion when the
involved marks are likely to cause confusion). The fact
remains that a newcomer has both the opportunity and
obligation to avoid confusion. Consequently, a party which
knowingly adopts a mark similar to one used by another for
related goods should not be surprised to find scrutiny of
the filer’s motive. See, e.g., Kimberly-Clark Corp. v. H.
Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541, 543
(Fed. Cir. 1985).
The Federal Circuit’s language is instructive:
The law has clearly been well settled
for a longer time than this court has
been dealing with the problem to the
effect that the field from which
trademarks can be selected is unlimited,
and there is therefore no excuse for
even approaching the well-known
trademark of a competitor, that to do so
raises “but one inference – that of
gaining advantage from the wide
reputation established by appellant in
the goods bearing its mark,” and that
all doubt as to whether confusion,
mistake, or deception is likely is to be
resolved against the newcomer,
especially where the established mark is
one which is famous and applied to an
inexpensive product bought by all kinds
of people without much care.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
223 USPQ at 1285, quoting Planters Nut & Chocolate Co. v.
Crown Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA
1962). See also Kenner Parker Toys Inc. v. Rose Art
Industries, Inc., 22 USPQ2d at 1456.
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Opposition No. 91184456
Given the number of applications that applicant has
filed seeking registration of well-known marks, we find it
highly unlikely that adoption of these marks was an
unintended coincidence. To the contrary, this evidence
strongly suggests that applicant filed this application and
others in an effort to trade off of the goodwill of the
prior registrants. This factor weighs against applicant and
in favor of opposer.
LIKELIHOOD OF CONFUSION
CONCLUSION
We conclude that consumers familiar with opposer’s
cosmetic and personal care products sold under its famous
L’OREAL and L’OREAL PARIS marks would be likely to
mistakenly believe, upon encountering applicant’s L’OREAL
PARIS mark for aloe vera drinks, that the goods originated
from or are associated with or sponsored by opposer.
LACK OF BONA FIDE INTENT TO USE
Opposer urges that the cumulative effect of the facts
surrounding applicant’s adoption of the mark L’OREAL PARIS –
“including Applicant’s complete lack of documentary evidence
or any other objective evidence that he can/will use the
mark, lack of capacity or experience needed to manufacture
or otherwise offer the identified goods, vague allusions to
use through licensing or outsourcing, failure to take any
concrete actions or to develop any concrete plans for use
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Opposition No. 91184456
and, most importantly, applicant’s pattern of filing intent-
to-use applications for disparate goods under the well-known
or famous marks of others” – demonstrates that applicant
lacks the requisite bona fide intent to use his mark in
commerce for aloe vera drinks. (Brief, p. 25).
Trademark Act Section 1(b), 15 U.S.C. § 1051(b), states
that “a person who has a bona fide intention, under
circumstances showing the good faith of such person, to use
a trademark in commerce” may apply for registration of the
mark. A determination of whether an applicant has a bona
fide intention to use the mark in commerce is an objective
determination based on all the circumstances. Lane Ltd. v.
Jackson International Trading Co., 33 USPQ2d 1351, 1355
(TTAB 1994); and Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). Opposer has the
burden of demonstrating by a preponderance of the evidence
that applicant lacked a bona fide intent to use the mark on
the identified goods. In Commodore, the Board held that
“absent other facts which adequately explain or outweigh the
failure of an applicant to have any documents supportive of
or bearing upon its claimed intent to use its mark in
commerce, the absence of documentary evidence on the part of
an applicant regarding such intent is sufficient to prove
that applicant lacks a bona fide intention to use the mark
in commerce as required by Section 1(b).” Id. at 1507. See
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Opposition No. 91184456
also Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB
2009); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d
1581 (TTAB 2008); and L.C. Licensing Inc. v. Berman, 86
USPQ2d at 1891-92.
Opposer has met its burden of demonstrating applicant’s
lack of a bona fide intent to use the mark. In the present
case, applicant has stated that he has no documents
evidencing a bona fide intent to use the L’OREAL PARIS mark
for aloe vera drinks. (Response to Document Requests Nos. 4,
9 and 10). Applicant also admits that he has no industry-
relevant experience or any expertise in manufacturing or
selling aloe vera drinks. (Response to Requests for
Admission No. 45). Applicant has not developed a business
plan, contacted any potential business partners or
investors, developed any logos or packaging, or undertaken
any other concrete activities in preparation for use of the
applied-for mark in connection with the goods. (Response to
Interrogatories, Nos. 5 and 11).
We agree with opposer’s assessment that the cumulative
effect of the record – including applicant’s complete lack
of documentary evidence or any other objective evidence that
he can/will use the mark, lack of capacity or experience
needed to manufacture or otherwise offer his identified
goods, vague allusions to using the mark through licensing
or outsourcing, and failure to take any concrete actions or
29
Opposition No. 91184456
to develop any concrete plans for using the mark –
demonstrates that applicant objectively lacks the requisite
bona fide intent to use the L’OREAL PARIS mark in commerce
for aloe vera drinks. SmithKline Beecham Corp. v.
Omnisource DDS LLC, 97 USPQ2d 1300, 1304-05 (TTAB 2010);
Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1726-30 (TTAB
2010); and Research In Motion Limited v. NBOR Corp., 92
USPQ2d 1926, 1930-31 (TTAB 2009).
Applicant’s very generalized and non-specific reference
to licensing and outsourcing as potential strategies to
bring the product to the market at an unspecified time in
the future (accompanied by printouts of third-party websites
of aloe vera suppliers) is, to say the least, woefully
deficient in showing a bona fide intent to use the mark.
(Response to Requests for Admission No. 46). Applicant made
no contact with these entities, and the fact that applicant
merely is aware of manufacturers of aloe vera juice who are
willing to make private label products for others like
applicant hardly establishes the bona fide intent of
applicant to produce an aloe vera drink.
So as to be clear, the record is devoid of facts
showing the efforts applicant has taken to commence use of
the marks, such as product design efforts, manufacturing
plans, graphic design efforts, test marketing,
correspondence with prospective licensees or suppliers,
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Opposition No. 91184456
preparation of marketing plans or business plans, creation
of labels, marketing or promotional materials, steps to
comply with regulatory requirements, securing of financing,
and the like. Moreover, there is no record evidence that
applicant is now or ever was in the business of producing
aloe vera drinks or any other food or beverage product.
Simply put, there are no concrete activities to corroborate
applicant’s bald allegation that he has a bona fide intent
to use the mark in commerce.
Another basis for finding no bona fide intent to use is
applicant’s demonstrated pattern of filing intent-to-use
applications for disparate goods under the well-known (even
famous) marks of others—applications which almost always
have been abandoned. As recounted above, applicant has
filed sixteen intent-to-use applications to register well-
known marks, albeit different marks than the one involved
herein; in all but one case, the applications were
abandoned.12 The legislative history of the Trademark Law
Revision Act of 1988 provides several specific examples of
12
We note that in some of applicant’s other applications,
registration was sought under Section 44 of the Trademark Act, 15
U.S.C. § 1126, based on registration of the same mark in another
country. While such applicants are excused from the requirement
in Section 1 of the Trademark Act that the mark be in use prior
to registration, they must nonetheless state that they have (and
must in fact possess) a bona fide intent to use the mark in
United States commerce. Section 44(e) of the Trademark Act (“The
application must state the applicant’s bona fide intention to use
the mark in commerce, but use in commerce shall not be required
prior to registration.”).
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Opposition No. 91184456
objective circumstances which, if proven, “may cast doubt on
the bona fide nature of the intent or even disprove it
entirely.” S. Rep. No. 100-515, 100th Cong. 2d Sess. at 23-
24 (1988), quoted in Lane Ltd. v. Jackson International
Trading Co., 33 USPQ2d at 1355. These circumstances include
where the applicant filed an excessive number of intent-to-
use applications to register marks which ultimately were not
actually used; and where the applicant filed an excessive
number of intent-to-use applications in relation to the
number of products the applicant is likely to introduce
under the applied-for marks during the pendency of the
applications. Although these examples may be specifically
distinguishable from the situation herein, the present
circumstances qualify as another example of a lack of a bona
fide intent to use a mark.
Notwithstanding the above, applicant persists in
maintaining that he “has vigorously pursued
commercialization” and that “these commercialization efforts
were always conducted in a forthright manner utilizing
business practices commonly found and accepted throughout
the United States and the world.” These actions, applicant
argues, “are the actions of an applicant whose motives are
genuine, sincere, and honest for the applicant has
consistently proceeded in a course of action that is logical
and reasonable, obeying all current trademark regulations as
32
Opposition No. 91184456
written and intended instead of dishonestly pursuing
commercialization via fraudulent, dishonest or unethical
means.” (Brief, p. 32).
Applicant’s mere statements that he intends to use the
mark L’OREAL PARIS, and his denial that he lacked a bona
fide intent, do not establish, in fact, that he had a bona
fide intent to use the mark in commerce when he filed the
involved application. Lane Ltd. v. Jackson International
Trading Co., 33 USPQ2d at 1355 (“applicant’s mere statement
of subjective intent, without more, would be insufficient to
establish applicant’s bona fide intent to use the mark in
commerce”). Evidence bearing on bona fide intent
is “objective” in the sense that it is
evidence in the form of real life facts
and by the actions of the applicant, not
by the applicant’s testimony as to its
subjective state of mind. That is,
Congress did not intend the issue to be
resolved simply by an officer of
applicant later testifying, “Yes,
indeed, at the time we filed that
application, I did truly intend to use
the mark at some time in the future.”
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, § 19:14 (4th ed. 2009). Here, the complete
lack of documentation or testimony or any other objective
evidence of applicant taking any concrete steps toward
commercial use of the applied-for mark clearly outweighs any
subjective (or even sworn) intent to use the mark.
Applicant’s blatant attempt to obtain registrations of third
33
Opposition No. 91184456
parties’ well-known marks, and subsequent abandonment of
those applications provides significant, additional support
for our conclusion.
Accordingly, we find that applicant lacks a bona fide
intent to use the mark in commerce.
DILUTION
In view of the decision to sustain the opposition on
the grounds of likelihood of confusion, and applicant’s lack
of bona fide intent to use, it is not necessary to consider
opposer’s dilution claim.
DECISION
We have carefully considered all of the evidence made
of record pertaining to the issue of likelihood of confusion
and bona fide intent, as well as all of the parties’
arguments related thereto, including any evidence and
arguments not specifically discussed in this opinion. As
highlighted by opposer in its reply brief in several
instances, some of applicant’s arguments are extremely
strained or irrelevant, while others are disingenuous or
verge on being incomprehensible. We have not belabored this
opinion with a discussion of such arguments; for those we
have not mentioned, we simply note that we have found them
unpersuasive.
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Opposition No. 91184456
The opposition is sustained on the grounds of
likelihood of confusion, and lack of a bona fide intent to
use the mark, and registration to applicant is refused.
35