Dana Kelmanv.Mindee K. Hardin DBA Nose Better

Trademark Trial and Appeal Board

Apr 4, 2018

No. 91224275 (T.T.A.B. Apr. 4, 2018)

Mailed: April 4, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Dana Kelman
v.
Mindee K. Hardin DBA Nose Better
_____

Opposition No. 91224275
_____

Matthew S. Nelles of Berger Singerman LLP,
for Mr. Dana Kelman.

Mindee K. Hardin,
pro se.
_____

Before Cataldo, Mermelstein, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
In application Serial No. 86598590, Applicant Mindee K. Hardin DBA Nose Better
seeks to register the mark BLESSYOUZ in standard characters on the Principal
Register for “disposable wipes impregnated with cleansing chemicals or compounds
for personal hygiene for the nose and face” in International Class 3. Opposer Dana
Kelman opposes registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
asserting priority and a likelihood of confusion with his mark BLESSUE used at
common law in connection with facial tissue. We sustain the opposition.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91224275
- 2 -
I. Evidentiary Issues
During trial, Applicant moved to strike Opposer’s testimony declarations, and the
Board addressed the motion in an order dated November 9, 2017. 31 TTABVUE. The
Board denied the motion to strike the trial testimony of Steven Kerman in its
entirety, 18 TTABVUE 3-6, granted the motion to strike the testimony of Garold May
in its entirety, id. at 7-9, and deferred until final decision Applicant’s motion to strike
specific portions of Opposer’s testimony and evidence as beyond the scope of his
disclosures, noting that the objections must be maintained in Applicant’s brief. See
Order at 9-10, 31 TTABVUE 9-10.
With their trial briefs, each party has asserted numerous evidentiary objections.
Because of the volume of objections, we address only objections to the cited evidence
on which we rely in our opinion. See Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1104 (TTAB 2007) (“[W]e see no compelling reason to painstakingly
go through all of the objections one by one except insofar as they relate to the outcome
determinative testimony and evidence.”).
II. Record
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Subject to the discussion in the preceding section, Opposer submitted the
following evidence:
• Opposer’s notice of reliance on third-party trademark registrations and his
pending application, discussed infra (17 TTABVUE);
Opposition No. 91224275
- 3 -
• Testimony declarations of:
1. Steven Kerman, chief operating officer of South Florida Paint &
Rehab, Inc. (18 TTABVUE 3-6), and
2. Opposer, with exhibits 1-43 (“Kelman Dec.”) (19 TTABVUE);
• Opposer’s rebuttal declaration testimony, with exhibits R-1 through R-13
(25 TTABVUE); and
• Opposer’s rebuttal notice of reliance with exhibits R-NR-1 through R-NR-9,
comprising Internet printouts (27 TTABVUE).
Applicant submitted the following evidence:
• Applicant’s testimony declaration, with exhibits A-L (“Hardin Dec.”) (20-21
TTABVUE); and
• Applicant’s notice of reliance, with exhibits 1-10, comprising Internet
printouts and screen captures (22 TTABVUE).
III. Opposer’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Under Section 13 of the Trademark
Act, 15 U.S.C. § 1063, a party with a reasonable belief that it would be damaged by a
registration has standing to oppose. Opposer submitted evidence that he owns
trademark application Serial No. 86643495 to register the mark BLESSUE for “facial
tissue; paper tissues” in International Class 16, and that the application has been
suspended based on a potential likelihood of confusion with the mark in Applicant’s
earlier-filed application. Exhibit C to Opposer’s Notice of Reliance, 17 TTABVUE 20-
30. This evidence demonstrates that Opposer has a reasonable belief that he would
Opposition No. 91224275
- 4 -
be damaged by registration of Applicant’s mark, establishing his standing. Life Zone
Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).
IV. Priority
The subject application was filed based on Applicant’s allegation of a bona fide
intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b). Applicant therefore is entitled to claim constructive use priority as of the
filing date: April 15, 2015. Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d
1175, 1180 (TTAB 2017). Applicant does not assert an earlier priority date.
Opposer submitted a copy of his expired Registration No. 3486263 for the mark
BLESSUE in standard characters for “facial tissue” in International Class 16, issued
August 12, 2008. Exhibit B to Opposer’s Notice of Reliance, 17 TTABVUE 15-19. That
registration was cancelled March 13, 2015 for failure to file an affidavit of use under
Section 8 of the Trademark Act, 15 U.S.C. § 1058. Some two months later, on May 28,
2015, Opposer filed application Serial No. 86643495, which is suspended based on
Applicant’s prior pending application, as noted supra.
Any benefits conferred by Opposer’s registration, including the evidentiary
presumptions afforded by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b),
were lost when the registration expired. Anderson, Clayton & Co. v. Krier, 478 F.2d
1246, 178 USPQ 46, 47 (CCPA 1973). Because it is cancelled, Opposer’s registration
is evidence only that it issued, and Opposer may not rely on his cancelled registration
to support his priority claim. See, e.g., Time Warner Entm’t Co. v. Jones, 65 USPQ2d
1650, 1654 n.6 (TTAB 2002). Opposer therefore must demonstrate by competent
evidence common-law rights in the BLESSUE mark prior to April 15, 2015.
Opposition No. 91224275
- 5 -
A. Opposer’s First Use at Common Law
A party may establish prior proprietary rights in a mark through an earlier
constructive filing date accorded to the party’s own registration or application, actual
use, or through use analogous to trademark use that creates a public awareness of
the designation as a trademark identifying the party as a source. See Giersch v.
Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009). Opposer testified that
he made his first sale of BLESSUE tissue to H.E. Butt Grocery Company on April 22,
2008. Kelman Dec. ¶ 17, 19 TTABVUE 5. A purchase order for 660 cases of BLESSUE
tissues on that date, along with an invoice for $20,862 dated May 23, 2008, is attached
to Opposer’s declaration as Exhibit 4. 19 TTABVUE 31-34. By showing first use of his
inherently distinctive mark nearly seven years before Applicant’s constructive
priority date, Opposer has established common-law priority in the BLESSUE mark.
B. Applicant’s Abandonment Arguments
Applicant does not contest Opposer’s first use in 2008, but contends that Opposer
has failed to prove that his mark has not been abandoned. See Applicant’s Brief at
11-26, 35 TTABVUE 12-27. This argument is unavailing. Non-abandonment is not
an element of Opposer’s case-in-chief; rather, Applicant may assert abandonment as
an affirmative defense against Opposer’s prior common-law rights. Applicant
therefore has the burden to plead and establish a prima facie case of abandonment.
See, e.g., Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315,
1316 (Fed. Cir. 2010); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1485 (TTAB
2017); cf. West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660,
1665 (Fed. Cir. 1994) (stating, in cancellation proceeding where registrant alleged
Opposition No. 91224275
- 6 -
that petitioner had abandoned its common-law mark: “The abandonment allegation
is, in effect, in the stance of a defense to a prior use assertion. Under the facts of this
case, the party asserting abandonment bears at a minimum a burden of coming forth
with some evidence of abandonment.”).
On March 22, 2017, the Board issued an order denying Opposer’s motion for
summary judgment and reviewing the parties’ pleadings for legal sufficiency. 14-
15 TTABVUE. In pertinent part, the Board addressed Applicant’s pleaded
affirmative defenses that Opposer has not used the mark BLESSUE continuously in
interstate commerce and has abandoned any rights he may have had in that mark.
See Answer ¶¶ 21-22, 4 TTABVUE 3. The Board pointed out that an opposer need
only show prior use of a mark, not continuous use, citing West Fla. Seafood, 31
USPQ2d at 1665, and found Applicant’s pleaded defense of abandonment legally
insufficient:
[B]ecause Applicant has failed to support her defense of
abandonment with factual allegations that Opposer
discontinued use of his mark for three consecutive years or
that Opposer discontinued use with an intent not to
resume use, we find that Applicant has failed to plead
sufficient factual allegat[]ions to support a defense of
abandonment. Thus, to the extent Applicant intends to
assert a defense of abandonment, Applicant must file an
amended answer properly alleging such a defense.
March 22, 2017 Order at 5, 14 TTABVUE 5.
Applicant did not file an amended answer. Opposer notes in his opening brief that
the abandonment defense was stricken, see, e.g., Brief at 22, 32 TTABVUE 28, and
strenuously objects to Applicant’s abandonment argument in his reply brief, see Reply
Brief at 2-6, 36 TTABVUE 6-10. On these facts, we find that the defense of
Opposition No. 91224275
- 7 -
abandonment was neither pleaded nor tried by consent. Therefore, and because
Opposer has established priority of use, we proceed to analyze whether Applicant’s
mark is likely to cause confusion with Opposer’s mark.
V. Likelihood of Confusion
We assess all probative facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services, the first two du Pont factors. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”). Opposer bears the burden of proving his claim of likelihood of confusion by
a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000). We address in turn the du Pont factors for which
the parties submitted evidence or argument.
A. Similarity of the Marks
The first du Pont factor is the similarity of the parties’ marks. In a likelihood of
confusion analysis, we compare the marks in their entireties for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1160 (Fed. Cir. 2014). “The proper test is not a side-by-side comparison of the marks,
Opposition No. 91224275
- 8 -
but instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
We find the marks to be highly similar in appearance, sound, connotation, and
overall commercial impression. Although there is no “correct” pronunciation of a
mark, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012), we
find that consumers are most likely to view and verbalize Applicant’s mark
BLESSYOUZ as if it were the plural form of Opposer’s mark BLESSUE, sounding
the letter “z” ending Applicant’s mark essentially as the phonetic equivalent of “s.”
See, e.g., Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962)
(noting that TINTZ is a phonetic spelling of “tints”); cf. In re Carlson, 91 USPQ2d
1198, 1201 (TTAB 2009) (finding URBANHOUZING phonetically identical to
URBAN HOUSING).
We find that both marks convey the same phrase “bless you,” commonly said to a
person who has just sneezed,1 in singular and plural form. It is well-established that
there is no material difference, in a trademark sense, between the singular and plural
forms of the same term. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632,

1 “Bless you” is an idiom that may be “said to someone who has just sneezed,” as defined in
the Merriam-Webster online dictionary at https://www.merriam-webster.com/dictionary/
bless%20you (last visited April 4, 2018). The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format or have regular fixed
editions. E.g., In re Olin Corp., 124 USPQ2d 1327, 1337 n.25 (TTAB 2017); see also Exhibit 3
to Applicant’s Notice of Reliance, 22 TTABVUE 18-19 (definition of “bless you!” meaning
“Said to a person who has just sneezed,” from Oxford Dictionaries British & World English
at https://en.oxforddictionaries.com/definition/bless_you!).
Opposition No. 91224275
- 9 -
1637 (Fed. Cir. 2016); Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA
1957); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015).
Opposer’s mark is differentiated slightly in appearance and connotation by its
spelling BLESSUE, evoking the word “tissue.” This minor point of distinction,
however, does not significantly diminish the strong similarities in overall commercial
impression of these two marks. We find that the first du Pont factor weighs in favor
of a finding that confusion is likely.
B. Similarity of the Goods
We next consider the second du Pont factor, the similarity or dissimilarity of the
parties’ goods. Our decision is based on the identification of goods as set forth in the
application. Stone Lion, 110 USPQ2d at 1162. In this case, we compare Applicant’s
identified goods to the goods in which Opposer has proven priority at common law.
See, e.g., Bell’s Brewery, 125 USPQ2d at 1344 (finding prior proprietary rights in both
opposer’s registered and common-law marks).
Applicant’s goods are identified as “disposable wipes impregnated with cleansing
chemicals or compounds for personal hygiene for the nose and face.” Opposer’s goods
are facial tissue and paper tissues. See Kelman Dec. ¶ 17, 19 TTABVUE 5. We take
judicial notice that “facial tissue” is defined as “a soft, disposable paper tissue
especially for cleansing the face or for use as a handkerchief.”2 The respective goods
therefore are similar and related in composition and use.

2 From Dictionary.com Unabridged, based on the RANDOM HOUSE DICTIONARY (2018) at
http://www.dictionary.com/browse/facial-tissue?s=t (last visited April 4, 2018).
Opposition No. 91224275
- 10 -
In addition, Opposer submitted printouts and copies of four third-party
registrations consisting of or comprising the mark KLEENEX for both facial tissue
and disposable wipes impregnated with cleansing chemicals or compounds for
personal hygiene. Exhibit A to Opposer’s Notice of Reliance, 17 TTABVUE 7, 10-12.
Although these registrations are limited in number and also not evidence that the
marks shown therein are in use or that the public is familiar with them, they are
consistent with a finding that the respective goods are of a kind that may emanate
from a single source under the same mark. See L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1440 (TTAB 2012); Motion Picture Ass’n of Am. Inc. v. Respect Sportswear Inc.,
83 USPQ2d 1555, 1562 (TTAB 2007). We find that the second du Pont factor weighs
in favor of a finding that confusion is likely.
C. Similarity of the Trade Channels
The third du Pont factor assesses the similarity of the parties’ established, likely-
to-continue trade channels. Opposer testified that his goods have been sold through
retail trade channels including supermarkets (Roundy’s), drugstores (Walgreens and
Marc’s Stores), and large retailers (Big Lots, Babies “R” Us, and Kmart). Kelman Dec.
¶ 24, 19 TTABVUE 7.3 Opposer submitted invoices and purchase orders
demonstrating his sales to these entities as well as, with respect to Roundy’s and

3 We consider this evidence only to the extent it pertains to Opposer’s sales to the named
entities. We do not rely on the “commercial details about third parties” included in this
testimony, such as the number and locations of their stores, and so need not address
Applicant’s objections to those details on the basis of competence and lack of foundation. See
Appeal Brief at 35, 35 TTABVUE 36.
Opposition No. 91224275
- 11 -
Marc’s, advertising showing the offer of his goods. Exhibits 6-8 and 14-18 to Kelman
Dec., 19 TTABVUE 50-67, 117-201.
The goods identified in the application are unrestricted as to trade channels, and
Applicant testified that she has “no intent to sell my wipes through any specialized
channels; I intend for them to be sold through standard consumer retail outlets.”
Hardin Dec. ¶ 25, 20 TTABVUE 7. We find that normal channels of trade for the
disposable wipes identified in the subject application include the types of retail
outlets through which Opposer’s goods have been sold, that is, supermarkets,
drugstores, and “big box” stores. We find that the third du Pont factor weighs in favor
of a likelihood of confusion.
D. Third-Party Use
There is no probative evidence concerning the sixth du Pont factor, the number
and nature of similar marks registered or used for similar goods. Applicant submitted
one page each of search results from Google.com and Bing.com for images of “bless
you tissues.” Hardin Dec. ¶ 18 & Exhibit G, 20 TTABVUE 5, 38, 40. These printouts
do not establish that any of the images displayed represent trademark use of the
phrase “bless you” or its formatives in association with facial tissues or disposable
wipes. See, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1399 n.62
(TTAB 2016) (“Internet evidence, similar to printed publications, is only admissible
for what it shows on its face, and because it does not fall within [any] exception to the
hearsay rule, will not be considered to prove the truth of any matter stated therein.”).
This factor is neutral.
Opposition No. 91224275
- 12 -
E. Inexpensive Goods Subject To Impulse Purchase
Finally, we consider the fourth du Pont factor, the conditions under which and
buyers to whom sales are made. “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, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Applicant submitted
no evidence concerning proposed pricing for her goods, but Opposer testified that his
facial tissue and paper tissues retail from 99 cents to $2.99 per box. Kelman Dec.
¶ 65, 19 TTABVUE 14.4 Because the respective goods are disposable and the record
shows that tissues are inexpensive, we find that the goods are more likely to be
purchased on impulse than with care and sophistication. The fourth du Pont factor
supports a finding that confusion is likely.
VI. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein, bearing the parties’ objections in mind. All of the
relevant likelihood of confusion factors evaluated either are neutral or weigh in favor
of a finding that confusion is likely. To the extent that any other du Pont factors for
which no evidence was presented by Applicant or Opposer may be applicable, we also
treat them as neutral.

4 This testimony falls within Opposer’s initial disclosure that Mr. Kelman is likely to have
knowledge regarding “the use of the BLESSUE Mark in commerce in connection with the
sales of facial tissue and paper tissues” and the pretrial disclosure of Mr. Kelman’s testimony
as to “sales of Blessue products.” Applicant’s Motion to Strike, Exhibit A at ¶ A(1) and Exhibit
B at ¶ A(1)(d), 23 TTABVUE 15, 18. Applicant’s objection to this testimony as beyond the
scope of Opposer’s disclosures is overruled. See Applicant’s Brief at 34, 35 TTABVUE 35.
Opposition No. 91224275
- 13 -
We find that Opposer has carried his burden to establish by a preponderance of
the evidence that Applicant’s mark BLESSYOUZ is likely to cause consumer
confusion with Opposer’s mark BLESSUE for facial tissues when used in association
with the goods identified in the subject application.
Decision: The opposition to registration of application Serial No. 86598590 is
sustained.