Fine Fragrances, Inc.v.Pavion Ltd.

Trademark Trial and Appeal Board

Jan 11, 1999

No. 91098991 (T.T.A.B. Jan. 11, 1999)

Hearing: Paper No. 18
March 11, 1998 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Fine Fragrances, Inc.
v.
Pavion Ltd.
_____
Opposition No. 98,991
to application Serial No. 74/507,384
filed on March 31, 1994
_____
Donald L. Dennison of Dennison, Meserole, Pollack and
Scheiner for Fine Fragrances, Inc.
Lawrence D. Mandel for Pavion Ltd.
______
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Pavion Ltd. to
register the mark CAFE COLORS for “perfumes, colognes,
cosmetics, namely, non-medicated nail care preparations,
non-medicated skin care preparations and non-medicated hair
care preparations.”1

1 Application Serial No. 74/507,384 filed March 31, 1994,
alleging a bona fide intention to use the mark in commerce.
Applicant has disclaimed the right to use the term “COLORS” apart
from the mark as shown.
Opposition No. 98,991
2
Registration has been opposed by Fine Fragrances, Inc.
under Section 2(d) of the Trademark Act. Opposer alleges
that since at least November 1979, opposer and its
predecessors have used the mark CAFÉ and a coffee bean and
leaf design in connection with perfumes and toilet water;
that opposer is the owner of a registration for this mark,
as set forth below,
for “perfumes and toilet waters;”2 and that applicant’s
mark, if used in connection with the identified goods, so
resembles opposer’s previously used and registered mark as
to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition. As affirmative
defenses, applicant asserted that opposer was barred from
claiming exclusive rights in the word CAFE for cosmetics
because opposer did not oppose and has not petitioned to

2 Registration No. 1,177,730 issued November 17, 1981; Sections 8
& 15 affidavit filed. The registration states that “[t]he
English translation of the term ‘Café’ is ‘Coffee’.”
Opposition No. 98,991
3
cancel other registrations which include the word CAFE; and
that in view of the numerous other registrations and
applications for marks which include the word CAFE for
cosmetics, opposer’s mark is extremely weak and is entitled
to little protection apart from the composite mark which
includes a design element.3
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance on a
status and title copy of its pleaded registration and a copy
of the assigment of the registration to opposer; and the
testimony deposition of Felipe Kreiezmar, opposer’s director
of marketing. Applicant took no testimony and offered no
other evidence herein. Only opposer filed a brief on the
case and only opposer’s counsel appeared at the oral
hearing.
Opposer is the exclusive United States distributor of
fragrances which are manufactured by Compagnie Francaise de
Commerce International (COFCI), a French company. Opposer
markets a number of brands for COFCI, including the CAFÉ
and design brand. Included in the CAFÉ and design line are
perfumes, perfumes de toilette in spray and splash form,
men’s cologne, and deodorant. According to opposer’s
witness, Mr. Kreiezmar, the CAFÉ and design brand was
introduced in 1979 and the first products were shipped to

3 We should note that, strictly speaking, these are not
Opposition No. 98,991
4
the United States around 1986. Opposer has a network of
sales representatives who market its fragrances to
wholesalers and retailers such as mass merchandisers, chain
stores, and department stores. Opposer promotes its
fragrances at retail by way of product displays, in store
promotions, counter testers and product give-aways. Opposer
also advertises in magazines, and appears at about ten trade
shows each year. Opposer spends approximately $50,000
annually advertising and promoting its products. Opposer’s
fragrances retail from $13.00 to $26.00 a bottle. For the
year 1996, opposer’s sales were in excess of $820,000. Mr.
Kreizemar testified that opposer recently launched a new
fragrance under the mark CAFÉ CAFÉ.
The record contains no information about applicant.
As indicated above, opposer has made of record a status
and title copy of its pleaded registration. Thus, there is
no issue with respect to opposer’s priority. King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
This brings us to the issue of likelihood of confusion.
Turning first to the goods, perfumes, colognes and
cosmetics--the goods on which applicant intends to use its
mark--are identical in part or otherwise closely related to
opposer’s perfumes and toilet waters. Thus, if the goods

affirmative defenses.
Opposition No. 98,991
5
were to be sold under the same or substantially similar
marks, confusion as to source or sponsorship would be likely
to occur.
Turning then to a consideration of the marks, we begin
our analyis of whether confusion is likely by keeping in
mind the principle that “when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Second, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
In comparing opposer’s mark CAFÉ and design with
applicant’s mark CAFE COLORS, we find the commercial
impressions engendered by the marks to be sufficiently
similar that, when the marks are used in connection with
identical and otherwise closely related goods, consumers are
likely to be confused. In the present case, applicant’s
mark is clearly dominated by the word CAFÉ, which is
Opposition No. 98,991
6
identical to the dominant portion of opposer’s CAFÉ and
design mark. Applicant has disclaimed exclusive rights to
use COLORS, thereby acknowledging the descriptiveness of
this term. Further, the coffee leaf design in opposer’s
mark is subordinate and less likely to be remembered by
consumers. It is the literal portion of opposer’s mark,
CAFÉ, which would be used by purchasers in referring to
opposer’s products. In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987).
Further, although applicant affirmatively asserted in
its answer that there are numerous other registrations and
applications for marks which include the word CAFE for
cosmetics, and thus opposer’s mark is weak, the record is
devoid of any such registrations or applications, or
evidence of third-party uses of similar marks in the
marketplace. Also, applicant failed to offer any proof with
respect to its other affirmative defense that opposer was
barred from claiming exclusive rights in the word CAFE for
cosmetics.
In sum, we conclude that purchasers familiar with
opposer’s perfumes and toilet waters sold under the mark
CAFÉ and design, would be likely to believe, upon
encountering applicant’s CAFE COLORS mark for perfumes,
colognes, and cosmetics, that such goods emanate from or are
otherwise sponsored by the same source. Even if purchasers
Opposition No. 98,991
7
were to notice the minor differences in the marks, they may
well believe that opposer is now selling a new line of
fragrances and cosmetics under the mark CAFE COLORS.
Decision: The opposition is sustained.
G. D. Hohein
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board