Consac Industries, Inc.v.Forest Essentials

Trademark Trial and Appeal Board

Aug 29, 2003

No. 91124502 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Hearing: Paper No. 14
July 10, 2003 RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Consac Industries, Inc. d/b/a Desert Essence
v.
Forest Essentials, Inc.
_____
Opposition No. 124,502
to application Serial No. 78/034,841
filed on November 11, 2000.
_____
Thomas M. Furth of Jordan and Hamburg, LLP for Consac
Industries, Inc.
Paul Cipriani, Applicant’s President, pro se, for Consac
Industries, Inc.
______
Before Cissel, Chapman and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
As amended, the above-identified application seeks
registration on the Principal Register of the mark DESERT
ESSENTIALS for “bar soap, hair shampoos and conditioners,
bath gels, body lotions and personal gift sets comprising of
(sic) hair shampoos, conditioners, baths gels, body lotions,
[and] bar soaps[,] in International Class 3.” The basis for
filing the application was applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 124,502
2
in connection with these products. As amended, the
application claims ownership of Registration No. 2,422,183
for the mark ISLAND ESSENTIALS for “skin soap in bar form
and body care products, namely, hair shampoo, hair
conditioner, and gel, body lotion, sunscreens and self
tanning lotion, colognes and bath crystals,” in Class 3, and
Registration No. 2,005,951 for the mark
for “personal soaps, hair shampoos, hair conditioners, bath
gels, body lotions, fragrances in the nature of perfumes and
potpourri,” in Class 3.
On October 29, 2001, a timely Notice of Opposition was
filed by Consac Industries, Inc., d/b/a Desert Essence, a
New York corporation. As grounds for the opposition,
opposer alleged that it and its predecessors-in-interest
adopted and have continuously used in interstate commerce
the trademark DESERT ESSENCE since at least as early as
November 11, 1980 in connection with goods similar to the
goods on which applicant intends to use the mark it seeks to
Opposition No. 124,502
3
register; that opposer owns seven listed federal trademark
registrations for marks which consist of or include DESERT
ESSENCE for a variety of personal care products that are the
same as or otherwise closely related to the goods listed in
the opposed application; that opposer’s DESERT ESSENCE mark
is famous within the meaning of Section 43(c) of the Lanham
Act; that the mark applicant seeks to register so resembles
opposer’s pleaded marks that if applicant were to use it in
connection with the goods listed the application, confusion
would be likely; and further, that such use by applicant
would lessen the capacity of opposer’s mark to identify and
distinguish opposer’s goods, thereby diluting the
distinctive quality of opposer’s mark under Section 43(a) of
the Act.
In its answer, applicant denied the salient allegations
asserted by opposer in the Notice of Opposition, and claimed
that applicant has used the marks in the registrations of
which it claimed ownership in the application, ISLAND
ESSENTIALS and “Forest Essentials” and design, “with no
problems.”
A trial was conducted in accordance with the Trademark
Rules of Practice. Opposer made of record the testimony and
nineteen related exhibits from the deposition of opposer’s
president of marketing, Jodi Billet. In addition, during
Opposition No. 124,502
4
its testimony period, opposer filed a notice of reliance on
status and title copies of its pleaded registrations.
Applicant declined to attend the deposition of Ms.
Billet, and neither took testimony nor filed any other
evidence1.
Opposer filed its brief, applicant’s president filed a
brief on behalf of applicant2, and opposer filed a reply
brief. The oral hearing referenced above was conducted
before the Board on July 10, 2003.3
Based on careful consideration of the testimony and
evidence properly of record in this opposition proceeding,
as well as the arguments presented by applicant and counsel
for opposer, we hold that opposer has met its burden of
proof with regard to its likelihood of confusion claim under
Section 2(d) of the Act.
1Opposer’s brief notes that opposer was served with the affidavit
of applicant’s president, but no copy thereof has been received
at the Board, and in any event, as opposer points out, any such
submission would not have complied with Rule 2.123(b) of the
Trademark Rules of Practice, and the Board would not have
considered any such affidavit.
2 Applicant sought to make of record evidence attached to its
brief, but opposer properly objected to the Board’s consideration
of any such attachments because they were not timely submitted
within applicant’s testimony period established in the earlier
trial schedule promulgated by the Board. Moreover, and in any
event, even if applicant had properly made of record the third-
party registrations on which its brief appears to be centered, it
is well settled that third-party registrations are not evidence
of the use of the marks therein and are of little probative value
in resolving the issue of likelihood of confusion. See Sams,
Third-Party Registrations in TTAB Proceedings, 72 TMR 297 (1982).
3 Counsel for opposer appeared in person before the Board in
Arlington, Virginia, and applicant’s president appeared on behalf
of applicant by means of a video teleconference.
Opposition No. 124,502
5
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case of E.I. duPont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Chief among these factors are the similarity of the marks as
to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods.
The goods listed in the application include bar soap,
hair shampoos and conditioners, bath gels and body lotions.
Opposer’s registrations and the testimony (and exhibits
thereto) establish opposer’s prior use of DESERT ESSENCE in
connection with the identical goods.
“When marks would appear on virtually identical goods
or services, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ 6098, 1700 (Fed. Cir. 1982).
In the case before us, especially in view of the identity of
the goods of applicant and opposer, the marks are plainly
similar enough that confusion would be likely if applicant
were to use the mark it seeks to register on the goods
listed in the application.
This is so because the marks create very similar
commercial impressions. The word “DESERT” is the first word
in each mark. This non-descriptive word plays a significant
Opposition No. 124,502
6
role in determining the connotation, and hence the
commercial impression, each mark has. The second word in
applicant’s mark is “ESSENTIALS,” whereas the second word in
opposer’s mark is “ESSENCE.” While these terms are not
identical, they are similar in appearance, pronunciation and
meaning. As opposer points out, “ESSENTIAL” is defined as
“of, relating to or constituting essence.” Merriam-Webster
Online Dictionary, (www.m-w.com) (of which the Board may
take judicial notice). When we compare “DESERT ESSENTIALS”
with “DESERT ESSENCE,” we find that the marks in their
entireties create very similar commercial impressions. The
record is devoid of evidence that anyone other than opposer
uses another mark which is similar to opposer’s mark in
connection with goods which are commercially related to
opposer’s products. As noted above, even if applicant had
properly made of record third-party registrations of such
marks, the registrations themselves would not have been
evidence that the marks therein are in use, or that
prospective purchasers of these kinds of products are aware
of the use of them such that small differences in the marks
are sufficient for such purchasers to distinguish among
them.
Applicant argues that in resolving the issue of whether
confusion would be likely, the Board should be guided by the
decision of the Examining Attorney to pass applicant’s mark
Opposition No. 124,502
7
to publication notwithstanding opposer's valid
registrations. This argument is not well taken. As opposer
points out, every opposition based upon Section 2(d) the
Lanham Act follows a finding by an Examining Attorney that
registration is not precluded by prior registrations. If
applicant’s argument were consistent with actual practice,
no opposition based on Section 2(d) could ever be sustained.
Additionally, although applicant asserts that its
decision to adopt the mark it seeks to register was made in
good faith, this fact does not vitiate the likelihood of
confusion. As opposer notes, if potential purchasers would
be likely to be confused by the use of similar marks on
identical products, applicant’s intentions would probably
not change that; no amount of good faith on the part of
applicant could make them less likely to be confused.
In summary, opposer has met its burden of proof in the
case at hand by establishing its prior use and registration
of a similar mark in connection with goods which are in part
identical and otherwise closely related to the goods listed
in the opposed application. Under these circumstances,
confusion within the meaning of Section 2(d) of the Act is
plainly likely. We need not resolve opposer’s claim of
dilution under Section 43(c)(1) of the Act.
DECISION: The opposition is sustained under Section 2(d) of
the Act, and registration to applicant is refused.