Allergan, Inc.v.Whit H. Smith

Trademark Trial and Appeal Board

Aug 24, 1999

No. 91099308 (T.T.A.B. Aug. 24, 1999)

Paper No. 26
GDH/gdh
THIS DISPOSITION IS NOT AUGUST 24, 99
CITABLE AS PRECEDENT OF THE TTAB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Allergan, Inc.
v.
Whit H. Smith
_____
Opposition No. 99,308 to application Serial No. 74/574,534
filed on September 16, 1994
_____
Kenneth L. Wilton of Small Larkin, LLP for Allergan, Inc.
Whit H. Smith, pro se.
______
Before Hohein, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Whit H. Smith to
register the mark "AQUA" for "liquid bath and toilet soap".1
Registration has been opposed by Allergan, Inc. on the
ground that opposer, "under its marks AQUA GLYCOLIC, AQUA GLYDE,
AQUA LACTEN Stylized and AQUAMED and its other marks (’Opposer’s
Marks’), has become well-known for its skin care, personal
hygiene and cosmetic products"; that "Opposer’s Marks constitute

1 Ser. No. 74/574,534, filed on September 16, 1994, which alleges a
bona fide intention to use the mark in commerce.
Opposition No. 99,308
2
a family of marks in connection with said products with the term
’Aqua’ being the distinguishing and common feature of this family
of marks"; that opposer, by assignment from its predecessor-in-
interest, Herald Pharmacal, Inc., is the owner of valid and
subsisting registrations for the following marks and goods:
(1) the mark "AQUA GLYCOLIC" for "skin
moisturizing lotion; [and] non-medicated
shampoo";2
(2) the mark "AQUA GLYDE" for "skin
cleanser";3
(3) the mark "AQUA LACTEN," depicted in
the stylized format shown below,
for "hand lotion";4 and
(4) "AQUAMED" for "skin lotion";5
that "[t]here is no issue as to priority" inasmuch as the filing
date of applicant’s intent-to-use application is "subsequent to
the issuance of all of Opposer’s [registrations for its] pleaded
registered marks"; and that applicant’s mark "so resembles

2 Reg. No. 1,704,479, issued on August 4, 1992, which sets forth dates
of first use of December 6, 1983; combined affidavit §§8 and 15. The
word "GLYCOLIC" is disclaimed.
3 Reg. No. 1,501,845, issued on August 30, 1988, which sets forth dates
of first use of August 2, 1985; combined affidavit §§8 and 15.
4 Reg. No. 1,058,876, issued on February 15, 1977, which sets forth
dates of first use of June 11, 1976. Such registration, however, has
expired for failure to renew and thus proof of ownership thereof would
not avoid the issue of priority of use of the subject mark.
5 Reg. No. 1,516,947, issued on December 20, 1988, which sets forth
dates of first use of November 30, 1965; combined affidavit §§8 and
15.
Opposition No. 99,308
3
Opposer’s Marks as to be likely, when applied to the goods of
Applicant, to cause confusion or mistake or to deceive".
Applicant, in his answer, has denied the salient
allegations of the opposition. Applicant also states therein
that "AQUA" is "a word common in the [E]nglish language and
research shows that over 600 trademarks have been registered
using the word aqua, including [registrations for] soap, skin
cleanser, liquid soap, etc."
The record consists of the pleadings, including, as
attachments to the opposition, reasonably contemporaneous
certified copies of opposer’s pleaded registrations showing that,
as of the three months preceding the filing of the opposition,
such registrations were subsisting and owned by Herald Pharmacal,
Inc.; the file of the opposed application; and, as opposer’s
case-in-chief, the testimony, with exhibits, of Joseph A. Lewis,
who is the director of research and development for opposer’s
cosmetic and other over-the-counter products. Applicant,
however, did not take testimony or otherwise introduce any
evidence on his behalf. Briefs have been filed, but an oral
hearing was not requested.
Opposer’s priority of use of its pleaded "AQUA
GLYCOLIC," "AQUA GLYDE" and "AQUAMED" marks is not genuinely in
issue inasmuch as the testimony of Mr. Lewis establishes that, as
confirmed by the copy of the assignment thereof, opposer’s
registrations for such marks and the marks themselves, together
with the goodwill appurtenant thereto, were indeed assigned to
opposer by its predecessor-in-interest, Herald Pharmacal, Inc.,
Opposition No. 99,308
4
about two months prior to the filing of the opposition. Thus,
and in light of the certified copies of such registrations which
accompany the opposition, opposer has proven that it is in fact
the owner of subsisting registrations for such marks. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974). The record, in any event, establishes that
opposer is the prior user of those marks and, although the
stylized format thereof has been discontinued, opposer is also
the prior user of its "AQUA LACTEN" mark.6 The only real issue
to be determined, therefore, is whether applicant’s "AQUA" mark,
when used in connection with liquid bath and toilet soap, so
resembles one or more of opposer’s "AQUA GLYCOLIC," "AQUA GLYDE,"
"AQUA LACTEN" and "AQUAMED" marks for, respectively, its skin
moisturizing lotion and shampoo, skin cleanser, hand lotion, and
skin lotion, that confusion is likely as to the origin or
affiliation of the parties’ goods.7

6 Applicant, having failed to take testimony or otherwise present any
evidence in his behalf, is limited to the September 16, 1994 filing
date of his application as the earliest date on which he can rely in
this proceeding. See, e.g., Lone Star Manufacturing Co., Inc. v. Bill
Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974) and
Columbia Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d 192, 125
USPQ 406, 407 (CCPA 1960).
7 Although opposer, as noted previously, has pleaded a family of
"AQUA"-prefixed marks and indicates in its brief that it "believes the
evidentiary record supports a finding that Opposer owns a family of
AQUA- marks," opposer further states therein that "the Board need not
reach this conclusion in order to find that Applicant’s mark is likely
to confuse." We observe, in this regard, that as stated in J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1891-92 (Fed. Cir. 1991):
A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks are
composed and used in such a way that the public associates
not only the individual marks, but the common characteristic
of the family, with the trademark owner. Simply using a
Opposition No. 99,308
5
According to the record, opposer acquired Herald
Pharmacal, Inc. ("Herald") in August 1995 by purchasing the major
assets of such firm, including its manufacturing facilities,
products and trademarks. Opposer’s witness, Mr. Lewis, who
became employed by opposer at the time of its acquisition of

series of similar marks does not of itself establish the
existence of a family. There must be a recognition among
the purchasing public that the common characteristic is
indicative of a common origin of the goods. ....
Recognition of the family is achieved when the pattern
of usage of the common element is sufficient to be
indicative of the origin of the family. It is thus
necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.
Contrary to the allegation in the opposition and in opposer’s
brief, it simply cannot be said on this record that opposer has
demonstrated the existence of a family of "AQUA"-formative marks,
particularly among the general public. Although opposer’s marks are
listed together in sales sheets, order forms, product catalogs and
price lists, nothing therein is indicative of the promotion of such
marks as a family characterized by the prefix "AQUA," especially since
various other marks for additional products marketed by opposer are
also set forth. The materials, moreover, are directed solely to the
drug wholesalers and pharmacy customers of opposer and, thus, can
scarcely be said, as stated in opposer’s brief, to constitute
"uncontroverted evidence that Opposer’s promotional materials ... were
distributed to the general public". The evidence, in short, simply
fails to show that opposer’s marks have been promoted in any manner
sufficient to create a recognition or awareness among the general
public, or even among opposer’s direct customers, of the common
ownership thereof so that a family of marks, characterized by the term
"AQUA" as its distinguishing element, in fact exists. See, e.g., La
Maur, Inc. v. Bagwells Enterprises, Inc., 199 USPQ 601, 606 (TTAB
1978) and Polaroid Corp. v. American Screen Process Equipment Co., 166
USPQ 151, 154 (TTAB 1970). Furthermore, the mere ownership of a
number of marks sharing a common feature, or even ownership of many
registrations therefor, is alone insufficient to demonstrate that a
family of marks exists. See, e.g., Hester Industries, Inc. v. Tyson
Foods, Inc., 2 USPQ2d 1646, 1647 (TTAB 1987); Consolidated Foods Corp.
v. Sherwood Medical Industries Inc., 177 USPQ 279, 282 (TTAB 1973);
Polaroid Corp. v. American Screen Process Equipment Co., supra; and
Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421
(CCPA 1965). Accordingly, inasmuch as opposer has not established its
assertion of a family of "AQUA"-based marks, the issue of likelihood
of confusion must be determined by comparing applicant’s mark for his
goods with each of opposer’s marks for its various products.
Opposition No. 99,308
6
Herald, was prior thereto the executive vice president of such
firm as well as a director and major shareholder. After joining
Herald, which was founded in the early 1960s, as a chemist in
March 1979, Mr. Lewis became the person responsible for the
development of its new products. Moreover, in addition to being
in charge of marketing those products, he was also in charge of
selecting the trademarks under which Herald’s goods were to be
sold.
While so employed at Herald, Mr. Lewis developed and
launched a skin cleanser which was first sold under the mark
"AQUA GLYDE" in 1985. Such mark has been in continuous use for
skin cleanser "until just recently," when "[t]hey changed the
name to Aqua Glycolic".8 (Lewis dep. at 12.) The "AQUA GLYDE"
product, while sold over-the-counter to the general public, was
principally marketed by having Herald’s sales representatives
distribute product samples thereof to physicians, who in turn
would recommend such skin cleanser to their patients for purchase
at drug stores.

8 However, as to whether use of the "AQUA GLYDE" mark has been
discontinued with the intent not to resume (that is, whether it has
been abandoned), Mr. Lewis testified only as follows:
Q Do you know if Allergen has the intent to abandon
this Aqua Glyde mark?
A I do not know the answer to that question.
Q Do you know what Allergen’s plans are with regard
to the Aqua Glyde mark?
A No, sir.
(Lewis dep. at 13.)
Opposition No. 99,308
7
Mr. Lewis also developed and choose the mark "AQUA
GLYCOLIC" for a skin moisturizing lotion and a non-medicated
shampoo. The former, which is marketed as a hand and body
lotion, was first sold by Herald in 1983, while the latter was
introduced in the mid-1980s. In addition to lotion and shampoo,
opposer offers face cream, facial cleanser and astringent under
the "AQUA GLYCOLIC" mark. All of such products have been
continuously sold under the "AQUA GLYCOLIC" mark and, while often
purchased at a physician’s recommendation, are targeted for sale
to "[g]eneral consumers" through "pharmacies, chain drug, [and]
chain stores, such as Walmart". (Id. at 17.) The goods "appear
in the personal moisturizers and cleansers and shampoos section
of those stores, [as] general toiletries-type products." (Id.)
As to the reason why he selected the marks "AQUA GLYDE"
and "AQUA GLYCOLIC," Mr. Lewis testified that:
We wanted to keep continuity within the
line, and we had already established the use
of Aqua with a couple of other products; in
particular, Aquamed and Aqua Lacten. And
aqua, the word itself, means water,
moisturization. Those are the types of
products that we were making.
So it suited the family of products that
we were making with respect to Aqua Glyde.
That’s why it was chosen and, also, with
respect to Aqua Glycolic.
(Id. at 29.)
With respect to Herald’s "AQUA LACTEN" hand lotion, Mr.
Lewis noted that, although he was not the originator thereof, he
is familiar with such product, which was developed shortly before
he became involved with Herald. While it appears that the
Opposition No. 99,308
8
product is no longer sold under the stylized format in which the
"AQUA LACTEN" mark was once registered, the record shows that the
mark is still in use, in a block letter manner, for hand lotion.
Such product, like opposer’s "AQUA GLYCOLIC" goods, is sold "[i]n
the drug store; in the same general cosmetics, moisturizers,
cleansers, toiletries section." (Id. at 21.)
Similarly, while Herald’s "AQUAMED" skin lotion was
already being sold at the time when Mr. Lewis began his career
with Herald, he testified that the "AQUAMED" mark has been in
continuous use for such product and is still being sold by
opposer. The product likewise is sold "in the pharmacy, [with]
shampoos, cleansers, [and] moisturizers." (Id. at 22.)
In addition, during the late 1980s, Herald commenced
use of the mark "AQUARAY" in connection with a sunscreen. Mr.
Lewis indicated that, like the marks "AQUA GLYDE" and "AQUA
GLYCOLIC," he chose the mark "AQUARAY" "to keep it within the
family of Aqua products currently being marketed by Herald."
(Id. at 30.) The "AQUARAY" mark has been in continuous use for
sunscreen and, like the others in opposer’s line of skin care
products, is sold to "general consumers" through "[p]harmacies,
chain drugs, [and] chain stores such as Walmart."9 (Id.)
Mr. Lewis further testified that, in particular,
opposer’s "AQUA GLYCOLIC," "AQUA LACTEN" and "AQUAMED" products

9 Inasmuch as applicant, in its brief, has raised no objection to
opposer’s reliance on such testimony, the pleadings are deemed to have
been amended, pursuant to Fed. R. Civ. P. 15(b), to include opposer’s
prior and continuous use of the mark "AQUARAY" for sunscreen." It is
pointed out, however, that even if the pleadings had not been deemed
to be so amended by the implied consent of the parties, the result in
this case would be the same.
Opposition No. 99,308
9
are chiefly "sold in the same area, the same general vicinity, in
the drug store," with its shampoo being "offset a little bit"
from its other goods. (Id. at 23.) He also noted that liquid
soaps, such as applicant’s "AQUA" liquid bath and toilet soaps,
would be sold in the same retail area as opposer’s products,
since as cleansers for the hands and body, such goods "fit into
that personal-care regime." (Id.)
Opposer, as indicated previously, acquired its interest
in the marks "AQUA GLYDE," "AQUA GLYCOLIC," "AQUA LACTEN,"
"AQUAMED" and "AQUARAY" as part of its purchase of the major
assets of Herald. In addition, with the exception of its
"AQUARAY" mark, all of such marks, their goodwill and any
registrations pertaining thereto were formally assigned by Herald
to opposer as evidenced by a copy of such assignment, dated
August 1, 1995, which has been recorded in the Assignment
Division records of the Patent and Trademark Office.
National sales figures for 1997, which is the only year
for which Mr. Lewis provided any such figures, were estimated to
be $4,500,000 for opposer’s various "AQUA GLYCOLIC" products,
$50,000 for its "AQUA LACTEN" hand lotion and $30,000 for its
"AQUAMED" skin lotion. According to Mr. Lewis, while sales of
the latter two products have been flat or "steady" for the past
five years, "sales have been increasing" for the "AQUA GLYCOLIC"
goods and have done so "dramatically" since about 1994. (Id. at
39-40.) Although opposer advertises its goods, including its
various "AQUA GLYCOLIC" products, Mr. Lewis stated that he was
not privy to the actual amounts expended. All of opposer’s marks
Opposition No. 99,308
10
are used on labels and packaging for its goods and, with the
exception of its "AQUA GLYDE" mark, also appear in its product
catalogs and price lists, which are directed to wholesalers and
retailers of its goods rather than to the general consumer.
Turning to consideration of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for determining whether a likelihood
of confusion exists, we hold that confusion as to the origin or
affiliation of the parties’ products is likely. Focusing first
on the similarities or dissimilarities between the respective
goods, we find that applicant’s liquid bath and toilet soap are
goods which are closely related to opposer’s products, including
its skin moisturizing lotion, skin cleanser, hand lotion, skin
lotion, sunscreen and shampoo. All of such goods are personal-
care products or toiletries which, the record shows, would be
sold to the same classes of purchasers, including ordinary
consumers, through the identical channels of trade, such as
pharmacies, chain drug stores, and chain department stores or
mass merchandisers. See, e.g., Ferdinand Mulhens v. Sir Edward
Ltd., 214 USPQ 298, 300 (TTAB 1981) [toilet soaps and bath soaps
found closely related to hair shampoos since such goods "are all
of the class commonly referred to as toiletries"] and Guerlain,
Inc. v. Richardson-Merrell Inc., 189 USPQ 116, 118 (TTAB 1975)
["hair shampoo and ... soap are closely related products which
ordinarily would be purchased in the same retail outlets, whether
they be drugstores or department stores, by the same ...
purchasers and frequently at the same time during the course of a
Opposition No. 99,308
11
shopping trip"]. Applicant, in his brief, does not contend to
the contrary. Clearly, if applicant’s and opposer’s goods, which
would be displayed for sale either together with or adjacent to
each other in the same retail areas, were to be sold under the
same or substantially similar marks, confusion as to the source
or sponsorship thereof would be likely to occur.
Considering, then, the similarities and dissimilarities
between the respective marks, opposer accurately points out that:
Applicant’s AQUA mark is identical to
the prefix of, and is entirely incorporated
in, each of opposer’s AQUAMED, AQUA GLYCOLIC,
AQUA LACTEN, AQUA GLYDE and AQUARAY marks.
As a result, Applicant’s mark is visually and
phonetically similar to each of Opposer’s
individual marks.
While opposer concedes that "[t]he ’AQUA’ prefix has been used by
Opposer because all of the products [it sells] have moisturizing
characteristics and ’aqua’ suggests water," it is nevertheless
the case that applicant’s "AQUA" mark, when used in connection
with his liquid bath and toilet soaps, likewise suggests water or
moisturizing characteristics. In consequence of the similarities
in appearance, sound and connotation, applicant’s "AQUA" mark and
each of opposer’s "AQUA GLYCOLIC," "AQUA GLYDE," "AQUA LACTEN,"
"AQUAMED" and "AQUARAY" marks, when considered in their
entireties, projects a substantially similar overall commercial
impression.
Applicant contends, however, that confusion is not
likely because, as asserted in his brief, "research shows that
over 1000 trademarks have been registered using the word aqua,
including [those for] soap, skin cleanser, liquid soap, etc."
Opposition No. 99,308
12
The record, however, contains no factual support for applicant’s
argument and, instead, shows that the only marks containing the
term "AQUA" and which are registered and/or in use are those
which are owned by opposer for its line of skin and hair care
products.
We conclude, in light thereof, that customers and
prospective purchasers, familiar with opposer’s "AQUA GLYCOLIC,"
"AQUA GLYDE," "AQUA LACTEN," "AQUAMED" and "AQUARAY" marks for,
respectively, skin moisturizing lotion and shampoo, skin
cleanser, hand lotion, skin lotion, and sunscreen, would be
likely to believe, upon encountering applicant’s substantially
similar "AQUA" mark for his liquid bath and toilet soap, that
such closely related toiletry products emanate from, or are
otherwise sponsored by or affiliated with, the same source. In
particular, applicant’s "AQUA" goods are likely to be viewed by
the purchasing public as new or additional items in opposer’s
line of personal-care products.
Decision: The opposition is sustained and registration
to applicant is refused.
G. D. Hohein
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board