Beaute Prestige Int’l.v.OroAmeri-ca, Inc. and Aurafin-OroAmerica LLC

Trademark Trial and Appeal Board

Feb 5, 2002

No. 91109130 (T.T.A.B. Feb. 5, 2002)

2/5/02
Hearing:
08 NOV 2001
Paper No. 38
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Beaute Prestige International
v.
OroAmerica, Inc. and
Aurafin-OroAmerica LLC1

_____

Opposition No. 109,130
to application Serial No. 75/252,794
filed on March 6, 1997
_____

Donald L. Dennison for Dennison, Scheiner, Schultz &
Wakeman for Beaute Prestige International.

Marc J. Kesten of Aurafin-OroAmerica, LLC for OroAmerica,
Inc.
______

Before Walters, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

OroAmerica, Inc. (applicant) has applied to register
the mark shown below for goods identified as “health and
beauty products, namely, hair shampoos and conditioners,

1 Aurafin-OroAmerica LLC is now the owner of the involved
application as a result of a merger. The change in ownership is
recorded with the Office at Reel/Frame No. 2365/0761.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 109,130
2
personal deodorants, sun block, bar soaps, skin creams,
skin lotions, and skin toners, lipsticks, nail polish,
mascara, baby lotion, baby powder, baby shampoos,
moisturizing lotion and lubricating lotion for the skin,
facial masks, after shave lotions and perfumes, colognes,
bath products, namely, bubble bath and bath crystals,
foam, gels, powder, and non-medicated bath salts,
suntanning lotion and creams, mouthwash, dentrifices and
breath fresheners and non-medicated foot bath
preparations” in International Class 3.”2

Beaute Prestige International (opposer) has opposed
registration on the ground that applicant’s mark, when
used on or in connection with the identified goods, so
resembles opposer’s previously used and registered marks
shown below:

Therefore, the new owner has been added as a party defendant,
and the caption of this proceeding amended accordingly.
2 Serial No. 75/252,794, filed March 6, 1997. The application
is based on applicant’s allegation of a bona fide intention to
use the mark in commerce. The stippling is a feature of the
mark and does not indicate color. The mark is described as a
“woman in evening gown fragrance bottle design.”
Opposition No. 109,130
3

‘555 reg. ‘775 reg.
for “women's fragrance products, namely, perfume and eau
de
toilette” in International Class 3.3
Applicant has denied the salient allegations of the
notice of opposition.4

3 Registration Nos. 2,078,555, issued July 15, 1997 and
2,080,775 issued July 22, 1997. The stippling in the ‘555
registration “is for shading purposes and to represent a frosted
appearance” and ”the lining in the drawing [in the ’775
registration] is for shading purposes only and is not intended
to represent color.” While opposer has not submitted a status
and title copy for its registrations, opposer’s witness has
testified that the registrations are owned by opposer and that
products with those designs are still sold by opposer.
Laxenaire dep., pp. 19, 21, 23-25. 37 CFR 2.122(d)(2); TBMP §
703.02. Both marks are registered on the Principal Register
without relying on the provisions of Section 2(f), 15 U.S.C. §
1052(f), of the Trademark Act. While opposer also argues (Br.
at 9-11) that its mark is inherently distinctive, for the
purposes of this opposition proceeding, the registrations are
presumed valid. 15 U.S.C. § 1057(b). No additional argument or
evidence is necessary.
4 Opposer’s Brief (p. 4) refers to Registration No. 2,141,962
(shown below). However, this registration was not identified in
its Notice of Opposition. Opposer’s counsel explained that
“[t]he only reason we brought the male torso in is just to show
that it does appear in advertising occasionally together with
the female torso. But it’s not being relied upon really as part
of the opposition.” Laxenaire dep., p. 62.
Opposition No. 109,130
4
The Record
The record consists of the file of the involved
application and the trial testimony deposition of
opposer’s French intellectual property counsel Sandrine
Laxenaire, with accompanying exhibits.
Both parties have filed briefs. An oral hearing was
requested by opposer who was the only party to appear for
the hearing held on November 8, 2001.5
Preliminary Matters
Before we consider the likelihood of confusion
question, we must address several issues applicant has
raised in its brief. First, applicant has objected to
opposer’s introduction of Exhibits 26 and 27 because
these documents are “irrelevant, not authenticated nor
certified and because judgment is not only from a foreign
tribunal, but it is also under appeal.” Applicant’s Br.
at 1. We agree with applicant that “decisions of foreign
courts in lawsuits involving a different evidentiary
record and based upon different laws are irrelevant to

Opposition No. 109,130
5
the issue before us.” Miles Laboratories, Inc. v.
International Diagnostic Technology, Inc., 220 USPQ 438,
445 (TTAB 1983). See also Puma-Sportschuhfabriken Rudolf
Dassler, K.G. v. Superga S.p.A., 204 USPQ 688, 690 n.3
(TTAB 1979) (Decisions of German courts “are of no
probative value”).6 While we
normally do not consider decisions of foreign tribunals,
even if we were to consider this decision, inasmuch as
the decision is on appeal and it involves different laws,
it would not affect the outcome in this case. We must
determine the question of likelihood of confusion based
on U.S. trademark law.
In its brief, applicant requests that the Board
strike the testimony of opposer’s witness Sandrine
Laxenaire as an expert because opposer failed to show
that she was qualified to testify as an expert.
Applicant’s request to strike the testimony contained in
its appeal brief is untimely. 37 CFR 2.123(e)(3) (Motion
to strike must be filed “[p]romptly after the testimony

5 In an order faxed on November 7, 2001, the Board denied
applicant’s request to conduct a hearing by telephone.
6 However, applicant’s failure to object to the lack of
authentication and certification of the decision is waived
because applicant failed to object to the documents when they
were introduced when opposer could have obviated or removed the
objection at that time. 37 CFR 2.123(k); Fed. R. Civ. P.
32(d)(3)(A). Even if the objection was not waived, opposer’s
Opposition No. 109,130
6
is completed”). In addition, “[o]bjections to testimony
depositions on grounds other than the ground of
untimeliness, or the ground of improper or inadequate
notice, generally should not be raised by motion to
strike.” TBMP § 534.03. To the extent applicant’s
request to strike is considered an objection to the
testimony, the objection should have been raised at the
time of the testimony because it could have been cured at
that time. TBMP § 718.04. Finally, even if we consider
applicant’s request to strike as an objection to
opposer’s witness testimony, it appears that Laxenaire
testified primarily as a fact witness and not as an
expert witness. Opposer maintains that the witness “was
never presented as an expert witness.” Reply Br. at 2.
We generally agree with opposer that the witness
testified as a fact witness and applicant’s objection is
not well taken.7
Applicant also argues that because of a prior U.S.
design patent (D102,172), which it requests we take

witness did authenticate the exhibits during her testimony.
Laxenaire dep. at 69-74, 97. Fed. R. Evid. 901(a) and (b)(1).
7 Opposer did ask the witness: “In your opinion as an expert
attorney in the intellectual property field in France, what is
the effect on the trade of the OroAmerica bottle in the United
States.” Laxenaire dep. at 73. Inasmuch as opposer does not
assert that its witness is an expert, we will not consider the
witness’s answer to this question that was clearly posed to the
witness as an expert.
Opposition No. 109,130
7
judicial notice of (Applicant’s Br. at 2), opposer’s two
registrations should be cancelled since opposer’s design
is in the public domain. Applicant’s Br. at 6. The
Board “does not take judicial notice of the records of
this Office” and we will not take judicial notice of the
design patent to which applicant refers. In re The
Clausen Co., 222 USPQ 455, 456 n.2 (TTAB 1984);
International Association of Lions Clubs v. Mars, Inc.,
221 USPQ 187, 189 n.8 (TTAB 1984) (same). More
importantly, an applicant cannot attack the validity of
an opposer’s registration in an opposition proceeding.
It must petition to cancel the opposer’s registrations.
In this case, applicant did petition to cancel these
registrations and on May 7, 2001, the Board granted
opposer’s uncontested motion to dismiss these
cancellations with prejudice. (Paper No. 28).
Therefore, applicant cannot collaterally attack opposer’s
registrations in this opposition proceeding. Contour
Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139
USPQ 285, 287 (CCPA 1963) (“[T]his is an opposition only
and in an opposition, this court has always held that the
validity of the opposer’s registrations are not open to
attack”); Cosmetically Yours, Inc. v. Clairol, Inc., 424
F.2d 1385, 165 USPQ 515, 517 (CCPA 1970) (“As long as the
Opposition No. 109,130
8
registration relied upon by an opposer in an opposition
proceeding remains uncanceled, it is treated as valid and
entitled to the statutory presumptions”). Therefore, we
will not consider applicant’s argument that we should
cancel opposer’s registrations because the designs are in
the public domain.
Priority
Priority is not an issue here in view of opposer’s
ownership of Registration Nos. 2,078,555 and 2,080,775.
See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Now, we turn to the central issue in this case which
is whether eventual use of applicant’s mark would be
likely to create confusion, given the existence of the
marks in opposer’s two registrations. To determine
whether there is a likelihood of confusion, the Court of
Customs and Patent Appeals, one of the predecessor courts
of the Court of Appeals for the Federal Circuit,
articulated thirteen factors to consider in the case of
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
1361, 177 USPQ 563, 567 (CCPA 1973). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes
Opposition No. 109,130
9
to the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Opposer’s arguments on the likelihood of confusion
issue are set out below:
Opposer’s Registrations are the only evidence of
record showing the use as a trademark of a spray
bottle for cosmetics and particularly fragrances in
the shape of a headless and armless torso of a
woman. Opposer’s registrations show several forms
of this design, each of which are [sic, is] visually
recognized as representing Opposer’s goods.
Registration 2,078,555 shows that the corset in the
design has a frosted appearance. This same frosted
appearance is apparent in Applicant’s headless and
armless torso body also having a deep V bustline in
common with that of the Opposer. Clearly, the marks
look alike to the consumer; especially considering
the specific goods involved herein which are usually
displayed on shelves and counters of stores selling
cosmetics and fragrances. It is obvious that the
marks are similar as to appearance, connotation and
commercial visual impression. Further, there is no
evidence of similar marks in use or on the register
for similar goods. See the benchmark standards set
by the Court of Customs and Patent Appeals in the
landmark case of In re du Pont de Nemours & Co.
(CCPA 1973) 177 USPQ 563.

Opposer’s Br. at 8-9.
Applicant responds by arguing that applicant’s
bottle design “is not that of a female torso, it is an
entire figure of a woman (without a head). The female
figure in Applicant’s bottle design is not wearing a
corset nor is it buxom. Applicant’s bottle design is a
Opposition No. 109,130
10
relatively flat-chested woman wearing an evening dress; a
classier depiction of the female form than Opposer’s
female torso.” Applicant’s Br. at 4. Applicant further
argues that opposer is seeking to “exclude all other[s]
from designing and making perfume bottles that resemble
the female form (whether it be a torso, full-bodied,
etc.).” Applicant’s Br. at 6.
In this case, both parties’ identifications of goods
include the identical goods “perfume.” Therefore, we
must assume that these goods move through the same
channels of trade to the same purchasers. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1817 (Fed. Cir. 1987). Because the marks
are used on identical goods, there is a greater
likelihood that when similar marks are used in this
situation, confusion would be likely. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines”). These factors favor
opposer.8

8 Also, opposer has had some modest success with marketing its
goods under its registered trademarks. The record shows, for
example, that opposer’s sales in the United States in 1995 were
Opposition No. 109,130
11
The next factor concerns the similarity or
dissimilarity of the marks as to appearance, sound,
connotation, and commercial impression. Since the marks
in this case are design marks, they would not be
pronounced. We must determine if they are similar based
on a visual comparison. In re Brundy Corp., 300 F.2d
938, 133 USPQ 196, 197 (CCPA 1962) (“[T]he case must be
decided primarily on the basis of the visual similarity
of the marks. The marks are not word marks and are not
capable of being spoken”); Daimler-Benz
Aktiengesellschaft v. Chrysler Corp., 169 USPQ 686, 688
(TTAB 1971) (“The trademarks involved herein are design
or symbol marks and thus this case must be decided
primarily on the basis of their visual impressions”). We
do not engage in a side-by-side comparison of the
trademarks to identify differences, but rather we look to
“the recollection of the average purchaser, who normally
retains a general rather that a specific impression of
trademarks.” Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).

approximately $1.9 million and that several celebrities attended
the introduction of its products in New York. Laxenaire Dep. at
53-56, 59; Ex. 21 and 22. Applicant questions the significance
of opposer’s sales and the sporadic nature of opposer’s
advertising. Applicant’s Br. at 5. We agree that opposer’s
evidence of limited sales and promotional activities does not
significantly favor a determination that confusion is likely.
Opposition No. 109,130
12
When we compare the designs, it is apparent that
there are few similarities between the designs besides
the most general ones. All of the designs are headless
representations of the female form. Besides that general
similarity, the figures are dressed differently and they
look different.

Applicant Opposer ‘555 Opposer ‘775

Applicant’s design consists of a woman wearing an
evening dress, without forearms or a head. Opposer’s
design is a female figure in a corset, without arms,
legs, or a head. Both parties have chosen to use a
female figure as the basis for their respective designs.
Inasmuch as the goods of both parties would include
perfume for females, the female shape is hardly an
arbitrary design when applied to women’s perfume. Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7
USPQ2d 1404, 1406 (TTAB 1988) (Stylized designs of houses
not similar; “[t]his element is suggestive of a key
Opposition No. 109,130
13
element involved in the real estate services of both
applicant and opposer”).
As opposer notes, one of its registration’s (‘555)
utilizes a frosted appearance and the stippling in
applicant’s mark may represent a similar frosted
appearance. Opposer argues that applicant’s and
opposer’s figures have a “V” neckline. While it is true
that both designs can be said to have a “V” neckline, the
necklines themselves and the clothing featuring these
necklines are dissimilar. The figure in applicant’s
design is wearing a full-length evening gown that covers
the shoulders to form a classic “V.” Opposer’s figure is
wearing a corset with a less dramatic “V” and the corset
does not cover the figure’s shoulders.
Merely because the marks have the same common
feature, a woman without a head, it does not mean
confusion is likely when the other features of the marks
are so different. See Brundy, 133 USPQ at 197,
marks shown at, 125 USPQ 497 (TTAB 1960) (Even though
both marks consist of a stylized letter “B,” CCPA held
that there was no likelihood of confusion). On the other
hand, when the designs' features result in the same
visual appearances, there would be a likelihood of
confusion. See In re Calgon Corp., 435 F.2d 596, 168
Opposition No. 109,130
14
USPQ 278 (CCPA 1971) (Confusion found when both designs
consisted of a woman in a bathtub). Here, we conclude
that the marks are significantly different.
After we consider all the du Pont factors and the
evidence of record, we determine that there is no
likelihood of confusion. Likelihood of confusion is
decided upon the facts of each case. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533
(Fed. Cir. 1997); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993). The various factors
may play more or less weighty roles in any particular
determination of likelihood of confusion. 992 F.2d at
1206, 26 USPQ2d 1688; du Pont, 476 F.2d at 1361, 177 USPQ
at 567.
While the goods of the parties are legally
identical9, the goods would be sold in the same stores,
and the goods would be sold to the same customers, the
marks of the parties are distinctly different. The
differences are so pronounced and the similarities so
tenuous that confusion is unlikely, and opposer cannot
prevail.
Decision: The opposition is dismissed.

9 Applicant’s professed intent to use this “bottle design” as a
mark for goods such as bar soaps, lipstick, mouthwash, and
Opposition No. 109,130
15

dentifrices does not alter the fact that both parties use or, in
applicant’s case, intend to use, their marks for perfume.