Estee Lauder Cosmetics Ltd.v.Yung Shin Pharm Ind. Co., Ltd.

Trademark Trial and Appeal Board

Mar 12, 2012

No. 91191370 (T.T.A.B. Mar. 12, 2012)

Mailed: March 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Estee Lauder Cosmetics Ltd.
v.
Yung Shin Pharm Ind. Co., Ltd.
_____

Opposition No. 91191370
to Application Serial No. 77580477
_____

Barbara A. Solomon and Jason D. Jones of Fross Zelnick
Lehrman & Zissu, PC, for Estee Lauder Cosmetics Ltd.

Morton J. Rosenberg of Rosenberg Klein & Lee, for Yung Shin
Pharm Ind. Co., Ltd.

_____

Before Holtzman, Cataldo, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On September 27, 2008, applicant, Yung Shin Pharm Ind.
Co., Ltd. (“applicant”) applied to register the mark HAC and
design, as shown below, on the Principal Register for
“skin soap; perfume soaps; medicated soaps; facial
cleansers; body washes; shaving preparations; shampoos; bath
salts, not for medical purposes; mustache wax; after-shaving
lotions; hair emollients; hair care preparations; adhesives
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91191370
2
for affixing false hair; facial beauty masks; skin whitening
creams; nail care preparations; cosmetic preparations for
skin care; anti-wrinkle creams; spot remover; body powder;
sunscreen preparations; cosmetics; cosmetic preparations;
hair dyes; hair waving preparations; lipsticks; false
eyelashes; coloring preparations for cosmetic purposes;
make-up removing preparations; nail polish; nail polish
remover; cosmetic oils; false nails; cosmetic preparations
for slimming purposes, namely, creams and lotions; adhesives
for affixing false eyelashes; astringents for cosmetic
purposes; adhesives for cosmetic use; cosmetic preparations
for eyelashes; eye shadows; hair oils; cosmetic kits,
comprised of lipstick, blush, eye shadow, eye liners; cotton
wool for cosmetic purposes; cosmetic pencils; depilatory
preparations; wax for removing body hair; toilet water;
perfume; fragrances; essential oils; antiperspirants;
deodorant for personal use; breath freshener sprays; beauty
masks; cosmetic preparations for baths,” in an intent-to-use
application in International Class 3:

On August 6, 2009, opposer, Estee Lauder Cosmetics
Ltd., opposed the registration of applicant’s mark on the
Opposition No. 91191370
3
ground that applicant’s mark is likely to cause confusion in
violation of Section 2(d) of the Trademark Act, 15 U.S.C., §
1052(d), with, among other registered marks,1 opposer’s
previously used and registered mark MAC, in standard
character format (Registration No. 3023827) 2 for, as
relevant, “cosmetic products including lipsticks, lip gloss,
lip liners, lip balms, eye shadows, eye lining pencils,
liquid eye liners, eye makeup, mascara, eyebrow pencils,
artificial eyelashes, blushers, bronzers, multi-use cosmetic
sticks, foundation makeup, pressed powder, loose powder,
makeup remover, concealers, eye palettes, lip palettes,
make-up kits, multi-use colored creams, powders and gels for
use on face; nail polish, nail enamel, nail polish remover;
non-medicated skin care products, namely cleansers,
exfoliators, toners, eye creams, cleansing wipes,
moisturizing spritzers, tinted moisturizers; fragrances for
personal use,” in International Class 3, and MAC and design,
as shown below, (Registration No. 1642532)3 for “cosmetics,
namely, eye shadow, eye make-up remover, eye liner,
foundation make-up, face powder, lipstick, lip gloss, lip
shiner, mascara, nail polish, eyebrow pencil, rouge, face

1 Opposer additionally pleaded several marks including the term
MAC and design with various other additional terms. We find it
unnecessary to consider them herein.
2 Registered December 6, 2005 (also includes Class 44 services).
Sections 8 and 15 affidavits accepted and acknowledged.
3 Registered April 30, 1991. Sections Sections 8 and 15
affidavits accepted and acknowledged. Renewed twice.
Opposition No. 91191370
4
shimmers, body lotions, moisture lotion, moisture tonics,
skin cleaner, dusting powder, facial moisturizers,” in
International Class 3, “cosmetic pencil sharpeners,” in
International Class 16, and “cosmetic cases sold empty,
cosmetic brushes, dusters for applying make-up, lip brushes,
and cosmetic sponges,” in International Class 21:

In support of its claim of likelihood of confusion,
opposer maintains its marks have “become instantly
recognizable to the public as exclusively denoting Opposer
and its cosmetics.” (Notice at para. 9). In this regard,
opposer additionally brings the opposition on the grounds of
dilution by blurring in violation of 15 U.S.C. § 1063(a),
alleging that “The MAC Mark is distinctive and had been used
nationally in commerce and widely advertised in the U.S. by
Opposer or its licensee for decades.” Id. at para. 25.
In its answer, applicant denied the salient allegations
of the notice of opposition. Only opposer filed a brief.4

4 We note that on August 1, 2011, opposer filed a brief labeled a
“Reply Trial Brief For Opposer.” However, as applicant had not
filed a brief, there was nothing to which opposer could reply,
and we have not considered the contents of the August 1 brief.
Opposition No. 91191370
5

The Record
The record consists of the pleadings; the file of the
involved application; and the following:
1. The testimonial affidavit5 of Karen Buglisi, opposer’s
Global Brand Market President, dated December 10,
2010, together with exhibits thereto.6
2. The testimonial affidavit of Rita Odin, opposer’s
Vice-President and Trademark Counsel, dated December
13, 2010, together with exhibits thereto.
3. The testimonial affidavit of Mario Ortiz, paralegal at
Fross Zelnick, Lehrman & Zissu, P.C., dated December
15, 2010, together with exhibits thereto.
4. Opposer’s three notices of reliance on
a. Magazines, news, and other print articles
submitted to show the fame of opposer’s pleaded
marks.
b. Copies of opposer’s pleaded MAC, and MAC and
design registrations (including Nos. 1642532 and
3023827) showing both that the registrations are
currently subsisting and that they are owned by
opposer.

5 The parties agreed via stipulation signed on June 1, 2010 to
take and submit testimony in affidavit form.
6 We note that the date is provided on the signature page without
the year for Ms. Buglisi’s affidavit. However, the year is
Opposition No. 91191370
6
c. Applicant’s responses to opposer’s discovery
requests and admissions.
Applicant submitted no evidence or testimony.7
Priority and Standing
As a result of opposer’s submission of status and title
copies of its MAC and MAC and design registrations (Nos.
1642532 and 3023827), among others, opposer has established
its priority as well as its standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) and King Candy Co. v. Eunice King’s Kitchen, 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).

apparent from the context, the content as well as the reference
thereto in opposer’s brief.
7 Although applicant did not submit any evidence, testimony, or a
trial brief, to the extent relevant, we discuss the defenses and
Opposition No. 91191370
7
As noted at the onset, we will consider the applicable
du Pont factors as to pleaded Registration Nos. 1642532 and
3023827, for MAC and MAC and design, which have the most
relevant goods and marks. If we find a likelihood of
confusion as to these registrations, then our analysis with
regard to the others pleaded by opposer would be moot.
Similarly if we do not, then we would not find it as to the
others either. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
Fame
We turn first to the factor of fame because this factor
plays a dominant role in cases featuring a famous or strong
mark. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Famous
marks are accorded more protection precisely because they
are more likely to be remembered and associated in the
public mind than a weaker mark. Id. A famous mark is one
“with extensive public recognition and renown.” Id. See
also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005).
As noted by opposer, “MAC has been ranked and remains
the #1 prestige makeup brand sold in the United States

arguments raised by applicant in its answer to the notice of
opposition.
Opposition No. 91191370
8
measured by dollar share.”8 (Buglisi Decl. at Para. 14).
Although sales and advertising revenue were submitted on the
confidential record, we can say that opposer’s MAC mark
enjoys a comfortable margin of the prestige makeup market,
which is itself an over $3 billion a year industry. Id. at
Para. 13-15.
MAC has also been a “regular sponsor of New York
Fashion Week, now known as Mercedes-Benz Fashion Week, the
twice-yearly fashion shows at which leading designers show
their clothing collections.” Id. at Para. 25. Meanwhile,
MAC routinely collaborates with large design partners such
as Disney and Mattel to produce limited edition makeup, such
as the 2007 “MAC Loves Barbie,” leading to a special edition
Barbie doll, both featured on the front cover of WWD. Id.
at Para. 27.
MAC products have received numerous awards, including
dozens in a two year period of 2008 to 2010. Id. at Para.
40. These include many “Reader’s Choice Awards” and “Best
Beauty Buy Awards” as well as the Elle magazine “2010 Genius
Awards,” and Redbook 2010 “Beauty Awards MVP.” Id.
Although the exact advertising numbers are on the
confidential record, we note that opposer spends a

8 The Buglisi Decl. describes the “prestige” makeup industry as
those “sold in finer department stores and beauty retailers, as
opposed to ‘mass makeup’ brands, such as Revlon and Cover Girl,
which are sold in drug stores and mass retailers like Wal-Mart
and Target.” (Buglisi Decl. at Para. 13)
Opposition No. 91191370
9
considerable sum on both standard and promotional
advertisements. This includes endorsements and partnerships
over the years with celebrities as diverse as Madonna, Kim
Catrell, KD Lang, Fergie, Britanny Spears, Tina Turner,
Paris Hilton, Lady Gaga, and Pamela Anderson. Id. at Para.
9-10.
Opposer’s witness has testified that opposer includes
its MAC, as well as MAC and design mark on all of its
products as well as its advertisements and promotions. Id.
at Para. 11. The marks have also been featured in
“thousands of unpaid product placements” over the past few
years in “beauty editorials and reviews” as shown by the
testimony and exhibits of opposer’s witness. Id. at Para.
36.
We conclude that opposer has shown significant market
exposure and overall fame amongst the relevant public. The
evidence clearly establishes that both the MAC and MAC and
design marks are famous marks in connection with cosmetics.
This fifth du Pont factor strongly favors opposer.
The Goods and Channels of Trade
The goods listed in the application include “nail
polish,” “eye shadow,” lipsticks” and “eye liners” as do
both of the pleaded registrations at issue herein
(Registration Nos. 1642532 and 3023827). We find that these
goods are legally identical.
Opposition No. 91191370
10
Because the noted goods described in the application
and opposer’s registrations are identical, we must presume
that the channels of trade and classes of purchasers for
these goods are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”). Although opposer attests to being in the
“prestige makeup” industry (Buglisi Decl. at Para. 13-14),
its identification of goods is not so limited. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.” [citations omitted]).
Opposition No. 91191370
11
Furthermore, applicant admits to having overlapping
channels of trade, including over the Internet. (Response
to Request for Admissions, #15; Buglisi Decl. at Para. 21
and 22). Accordingly, we must assume that opposer’s “nail
polish,” “eye shadow,” lipsticks” and “eye liners” could be
sold by the same distributors or stores, and -- given that
they are identical goods -- side-by-side on the same
shelves, as applicant’s goods.
These second and third du Pont factors also heavily
favor finding a likelihood of consumer confusion.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that
the more similar the goods at issue, the less similar the
marks need to be for the Board to find a likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
This is especially true in the case of a famous mark, which
enjoys a “wide berth” of protection. See Kenner Parker Toys
Inc. v. Rose Arts Industries, Inc., supra, 22 USPQ2d 1453,
1456.
Opposition No. 91191370
12
In comparing the marks, we are mindful that the test 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 so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Opposer’s mark in Registration No. 3023827 consists of
the term “MAC” in standard character form. As such, opposer
may display it in any of a variety of forms. See Citigroup
Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259
(Fed. Cir. 2011) (“If the registrant ... obtains a standard
character mark without claim to ‘any particular font style,
size or color,’ the registrant is entitled to depictions of
the standard character mark regardless of font, style, size,
Opposition No. 91191370
13
or color). Opposer’s mark in Registration No. 1642532
consists of the term MAC and design, as follows:

Applicant’s mark consists of the term HAC and design as
follows:

The cross bar in the “A” appears to have been replaced with
a design. However, applicant refers, in its answer, to its
mark as “the stylized letters ‘HAC.’” (Answer at Para. 34).
We find that, with this minimal stylization, consumers would
clearly recognize applicant’s mark as the letters “HAC.”
See CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir.
1983) (When a mark consists of a literal as well as a design
element, consumers are more likely to recall the literal
element, since consumers are likely to call for, or refer
to, the goods by their name); see also In re Dakin’s
Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB
1987).
Opposition No. 91191370
14
Both opposer’s and applicant’s marks consist of three
letters, ending with a shared “A-C.” Indeed, as they differ
by only their first letter, the terms “MAC” and “HAC” are
rhyming. We further find that applicant’s display is quite
similar to opposer’s, employing an exceedingly similar,
modern-looking font, and using a “dot” to replace the line
in the letter “A,” just as opposer puts dots between its
letters. Moreover, opposer’s standard character mark is not
limited in its display. Accordingly, in both appearance and
sound, the marks are rather similar.
Regarding connotation and commercial impression,
opposer’s witness has testified that the term “MAC” is a
short form for “Makeup Art Cosmetics, Inc.” (Buglisi Decl.
at Para. 1). Because there is no evidence of the extent to
which purchasers of opposer’s goods are aware of this
meaning, we find this acronym to be either arbitrary or, at
worst, suggestive, of the cosmetics in the pleaded
registrations. We do not find the term “MAC” to otherwise
create a clear commercial impression. Similarly, the term
“HAC” is not apparently a word in the English language, and
in the absence of evidence of any recognized meaning
thereof, creates no obvious connotation or commercial
impression.
Applicant asserts, in its answer that “[t]he letters
‘AC,’ ‘MAC,’ and variations thereof are commonly used by
Opposition No. 91191370
15
other registrants and sellers in the marketplace.” (Answer
at Para. 36). In support of this assertion, applicant’s
answer cites seven examples of marks in International Class
3. Applicant also includes copies of the third-party
registrations with its answer. However, this was not a
proper method for submitting third-party registrations. See
37 CFR 2.122(c) (“an exhibit attached to a pleading is not
evidence on behalf of the party to whose pleading the
exhibit is attached unless identified and introduced in
evidence as an exhibit during the period for the taking of
testimony.”) Applicant did not resubmit the registrations,
or any other evidence or testimony, during its testimony
period, and there is no other evidence of them of record.
Therefore we do not consider them in our decision.
Meanwhile, we do note that even if they were properly
submitted, third-party registrations have little probative
value because they are not evidence that the marks are in
use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). In this
regard, applicant admitted, in response to discovery
requests, that it is “not aware of any third party use of
Opposition No. 91191370
16
the MAC mark in connection with cosmetics.” (Applicant’s
Response to Request for Admission No. 27).
In summary, we find the dissimilarities between
opposer’s and applicant’s marks to be outweighed by the
similarities in sight and sound, especially in light of the
fame of MAC and MAC and design marks, and considering the in
part identical nature of the goods. Accordingly, this key
du Pont factor weighs in favor of finding a likelihood of
confusion.
Consumer Sophistication
Applicant refers in its answer to the “loyal” and
“sophisticated” purchasers of these “undeniably expensive
goods.” (Answer at Para. 33). However, there is no
evidence to that effect of record, and rather, as noted
earlier, we are bound by the parties’ respective
identifications of goods which have no such limitations.
See Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
We can only assume that the “nail polish,” “eye shadow,”
lipsticks” and “eye liners” identified by both applicant and
opposer will be marketed to all classes of consumers,
whether sophisticated or otherwise, and at any price range.
Although opposer’s witness has noted that it is in the
“prestige makeup” market, (Buglisi Decl. at Para. 14) its
identification of goods contains no limitation to that
Opposition No. 91191370
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effect. Furthermore, applicant has admitted both that there
are “no restrictions on the class of consumers” and that it
“intends to market goods offered under Applicant’s mark to
any consumer of cosmetics” (Applicant’s Response to Request
for Admission No. 16 and 17).
We deem this fourth du Pont factor to be neutral.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
the goods are identical in relevant part, and are likely to
be marketed through the same channels of trade to consumers
of all levels of sophistication. Opposer’s MAC and MAC and
design marks are famous, such that the marks are strong, and
the marks are similar in sight and sound. Accordingly, we
find a likelihood of consumer confusion between opposer’s
pleaded marks and applicant’s mark for the identified
goods.9
DECISION: The opposition is sustained.

9 In light of our finding on likelihood of confusion, we find it
unnecessary to consider opposer’s claim of dilution.