Homedics, Inc.v.Pollenex Corp.

Trademark Trial and Appeal Board

Jul 23, 1997

OPP (T.T.A.B. Jul. 23, 1997)

THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
JULY 23, 97
Hearing: Paper No. 34
November 20, 1996 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
______
Trademark Trial and Appeal Board
______
Homedics, Inc.
v.
Pollenex Corporation
______
Opposition No. 89,271
to application Serial No. 74/252,116
filed on March 4, 1992
______
Julie Greenberg of Gifford, Krass, Groh, Sprinkle, Patmore,
Anderson & Citkowski, P.C. for Homedics, Inc.
Charles A. Laff, Martin L. Stern, and Diana Flynn of Laff,
Whitesel, Conte & Saret, Ltd. for Pollenex Corporation.
______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Opposition No. 89,271
2
Pollenex Corporation has filed an application to
register the mark BODY BASICS for "hand held electrical
massage apparatus."1
Registration has been opposed by Homedics, Inc.
Opposer alleges that applicant's mark, when applied to its
goods, so resembles the term BODY BASICS, which has been
previously and continuously used by opposer since November
1988 in connection with the marketing and promotion of a
line of health care appliances, including massagers for home
use, as to be likely to cause confusion, mistake or
deception. Opposer has also pleaded ownership of
application Serial No. 74/312,421, filed on September 10,
1992, to register the mark BODY BASICS for "hand held
electrical massage apparatus" and claiming dates of first
use of July 24, 1992.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. Applicant has also
asserted, as "affirmative defenses," that opposer has failed
to state a claim upon which relief can be granted because
opposer did not use the term BODY BASICS in a trademark,
service mark or trade name sense prior to the filing date of
applicant's application, and that opposer is guilty of
acquiescence and laches and is estopped from asserting any

1Serial No. 74/252,116, filed March 4, 1992, which alleges a
bona fide intention to use the mark in commerce.
Opposition No. 89,271
3
rights against applicant with regard to applicant's
application to register the mark BODY BASICS.2
The record consists of the pleadings; the file of the
involved application; and trial testimony, with exhibits, of
opposer's witnesses, Roman Sam Ferber, Michael Perkins and
Jack Disalvo. Applicant took no testimony, but submitted,
under a notice of reliance, the discovery deposition of Mr.
Ferber3 and opposer's responses to applicant's discovery
requests. Both parties filed briefs on the case and were
represented by counsel at the oral hearing.
The issues to be decided in this case are priority of
use and likelihood of confusion.
Opposer, Homedics Inc., is in the business of
designing, producing and marketing a variety of health and
fitness products. According to opposer's president, Mr.
Ferber, opposer began doing business around 1987-88 and its
first products were an adjustable back cushion and
inflatable neck pillow. Opposer expanded its line of

2In its brief, applicant never discussed the defenses of
acquiescence and laches. In any event, these defenses are
unavailable to applicant. NCTA v. American Cinema Editors, 937
F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991).
3We note that applicant submitted a copy of the discovery
deposition, only. Applicant did not submit the exhibits, one of
which was a copy of opposer's 1991 dealer price list. Exhibits
to a discovery deposition do not automatically come in with the
deposition when the latter is submitted under a notice of
reliance. To form part of the record, the exhibits must be
submitted as well. In view thereof, and since opposer's 1991
price list otherwise has not been properly made of record (see
the Board's January 3, 1996 order), we have not considered this
list in reaching our decision herein.
Opposition No. 89,271
4
products to include hand held massagers for home use, seat
cushions, air purifiers, and heart monitors. Opposer's
catalogs constitute the primary marketing tools for sales of
these products, with distribution of its 1989 catalog in the
range of 10,000 to 15,000 and that of its 1990-91 catalog in
the range of 15,000 to 20,000.
According to Mr. Ferber, approximately a year after
opposer began business, he and an employee of the firm of
Lutz & Associates came up with the term BODY BASICS to
identify opposer's line of health and fitness products.
BODY BASICS appears on the front cover of opposer's 1989 and
1990-91 catalog in the following manners:

Opposition No. 89,271
5
Opposition No. 89,271
6
BODY BASICS appears in the text on page 2 of opposer's 1989
catalog as follows:
Opposition No. 89,271
7
Opposer's 1989 and 1990-1991 catalogs were distributed to
wholesalers and retailers, ranging from small drugstores to
large department store chains, and to health professionals,
including chiropractors. While Mr. Ferber indicated that
BODY BASICS appeared on other promotional materials, no
additional materials were offered into evidence. According
to Mr. Ferber, opposer spent approximately $250,000 in
promotional and advertising expenses for its health and
fitness products for the period 1988-92. During the same
period, opposer's sales totaled approximately $100,000. In
mid-1992 opposer began applying BODY BASICS to boxes
containing its products. According to Mr. Ferber, for the
period July 1992 to July 1994, opposer sold approximately
3.1 million units of merchandise bearing the mark BODY
BASICS.
The record contains no information about applicant,
although it appears that applicant has begun use of its
mark.
Turning first to the issue of priority, opposer
maintains that since prior to March 4, 1992, the filing date
of applicant's application, it has been using the term BODY
BASICS in connection with health and fitness products,
including massagers for home use, in a manner analogous to
trademark use, and that this use of BODY BASICS is
sufficient to give opposer priority rights in the term and
Opposition No. 89,271
8
to bar registration of applicant's mark under Section 2(d)
of the Trademark Act.
Applicant, however, contends that opposer's use of the
term BODY BASICS was not in a manner analogous to trademark
use; but rather in a descriptive manner, i.e., to describe a
class of products which provides the user with body comfort
and relaxation, and that opposer may not rely on this use of
the term BODY BASICS to establish priority. Further,
applicant contends that opposer's evidence of analogous use
is insufficient because opposer has not shown that its
catalogs bearing the designation BODY BASICS reached more
than a negligible number of customers.
In T.A.B. Systems v. PacTel Teletrac, 77 Fed.3d 1272,
37 USPQ2d 1879, 1882 (Fed. Cir. 1996), the Court of Appeals
for the Federal Circuit noted that:
It is well settled that one may ground
one's opposition to an application on the
prior use of a term in a manner analogous
to service mark or trademark use. Such an
"analogous use" oppostion can succeed,
however, only where the analogous use is of
such a nature and extent as to create public
identification of the target term with the
opposer's product or service.
The cases on analogous use have not
required that opposer proffer survey
evidence or other direct evidence of the
consuming public's identification of the
target word or phrase with the opposer as
the source of a given product or service.
Instead, the fact finder may infer the fact
of identification on the basis of indirect
evidence regarding the opposer's use of the
word or phrase in advertising brochures,
catalogs, newspaper ads, and articles in
newspapers and trade publications.
Opposition No. 89,271
9
(Citations omitted.)
Further, the Court noted that the "activities claimed to
constitute analogous use must have substantial impact on the
purchasing public". 37 USPQ2d at 1882.
After careful consideration of the parties' arguments
and evidence herein, we find that opposer has established
its priority with regard to the term BODY BASICS in
connection with its line of health and fitness products,
including massagers for home use.
In support of its position that opposer has used BODY
BASICS in a descriptive, rather than a trademark manner,
applicant relies on portions of the discovery and testimony
depositions of opposer's president, Mr. Ferber. It is
essentially applicant's position that Mr. Ferber has
conceded in these portions of the depositions that BODY
BASICS is descriptive of opposer's products. The pertinent
portions of the depositions are set forth below:
Q. Were you using the mark -- not the mark, the
words Body Basics as descriptive terms to try
to explain to readers what your product
line was?
A. That may have been one reason.
Q. I believe, again, later in Paragraph 2
[on the first page of opposer's 1989
catalog], you also used the words Body
Basics. What were you intending to
communicate at that point in the letter...?
A. I can't say what I was intending at that
time. Again, I can only tell you maybe
based on my opinion now, I probably was
trying to further an understanding of
that terminology in making it, relating
it to the front cover of the catalogue.
(Ferber discovery deposition, p. 43)
Opposition No. 89,271
10
......
Q. The Body Basics terminology, which I
understand you use in conjunction with
the entire line of goods, does it...
describe a particular product in here
[the line of goods]? Is there a particular
product...
A. No.
Q. -- that you think is identified?
A. No.
Q. Does it describe a particular use of any of
your products or all of your products?
A. No. I mean the name is, it's supposed to
be a catchall for everything I have in my
line. Everything included.
Q. Does it describe a particular feature of
any of these products?
A. No. If I did, I mean -- if it did, people
would be ordering Body Basics from me.
People order items from me. I never got an
an order that somebody said, "I want to
order a Body Basics." It's not specific
to any one item. It's basically a catchall
phrase that describes everything that I sell.
(Ferber testimony deposition, p. 19)
We disagree with applicant that the above testimony is
a concession that BODY BASICS is descriptive of opposer's
products. There is nothing in this testimony that indicates
that BODY BASICS conveys an immediate idea of the
ingredients, qualities or characteristics of opposer's
products.
Further, applicant likens this case to In re Manco,
Inc., 24 USPQ2d 1062 (TTAB 1992) [THINK GREEN for mailing
and shipping boxes does not function as an indication of
source, but rather as an expression of environmental
awareness]; and Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974
(TTAB 1988) [Use of CONFIDENCE in phrase "confidence to
enjoy a normal and active life" in booklet describing
Opposition No. 89,271
11
incontinence products does not constitute use in manner
analogous to trademark use]. Each of these cases, however,
is distinguishable. In re Manco, Inc. is distinguishable
because applicant has not shown that BODY BASICS is a
recognized expression in the health and fitness field. Ipco
Corp. v. Blessings Corp. is distinguishable because in this
case, opposer has not simply used BODY BASICS in a phrase or
text. Rather, BODY BASICS appears prominently on the cover
of two editions of opposer's catalogs for its line of health
and fitness products.
We turn next to applicant's argument that the evidence
herein does not permit the inference that opposer reached
more than a negligible number of potential customers with
its references to BODY BASICS and thus opposer has not
established that it used BODY BASICS in a manner analogous
to trade mark use. Opposer relies on T.A.B. Systems, supra,
where the opposer therein, PacTel, sought to rely on prior
use of the term TELETRAC for vehicle tracking and location
services in a manner analogous to service mark use. The
Court found that PacTel's evidence failed to support the
inference that PacTel reached more than a negligible share
of potential customers with its references to TELETRAC. In
reaching this finding, the Court noted, inter alia, that it
was unable to determine that more than a negligible number
of potential customers was reached by PacTel's advertising
and promotional efforts in the absence of proof by PacTel of
the size of its market, i.e., the number of potential
Opposition No. 89,271
12
customers for its vehicle tracking and location service.
The court noted, however, that prior analogous use does not
require proof that "a fixed percentage, like 20%, much less
51%, of the potential customers must have formed the
required 'prior public identification.'" 37 USPQ2d at 1883.
In this case, the record shows that the relevant
purchasing public for opposer's products is not only
ordinary consumers, but the trade as well, i.e.,
wholesalers, retailers and health professionals. Indeed,
opposer's "immediate" purchasers are those in the trade as
this is who opposer sells its products to. The
uncontroverted evidence is that opposer distributed to the
trade a minimum of 25,000 catalogs bearing the term BODY
BASICS from 1989 to 1991. Featured in these catalogs were,
inter alia, body massagers, foot massagers, shower
massagers, seat cushions, back cushions, air purifiers, and
heart monitors. Opposer promoted its products primarily
through catalogs and the bulk of its $250,000 advertising
and promotional expenditures was for printing and
distributing catalogs. Notwithstanding the absence of proof
of the number of potential purchasers of opposer's products,
and even assuming that they number in the millions, since
the ultimate purchasers of the products are ordinary
consumers, we believe that opposer's evidence supports the
inference that more than a negligible number of opposer's
potential customers were reached. Stated differently,
opposer's distribution to the trade of this number of
Opposition No. 89,271
13
catalogs prominently bearing the term BODY BASICS over an
extended period of time establishes prior use of the term in
a manner analogous to a trademark.4 We are not troubled by
the fact that opposer offered no other materials (e.g.,
advertising brochures or articles in trade publications) as
evidence of its promotional efforts. We note that use of a
term in one kind of promotional material has been held to
create protectible rights in the term. See Sargent &
Greenleaf, Inc. v. Ideal Security Hardware Corporation, 186
USPQ 94 (TTAB 1975) [Advertisements in trade publications
for locks featuring the term THE BRUTE sufficient to vest in
opposer protectible rights therein].
Turning then to the issue of likelihood of confusion,
applicant's only argument with respect thereto is that
opposer has shown no instances of actual confusion during
its period of analogous use. However, applicant offered no
evidence bearing on the extent of use of its mark such that
we can conclude that there was any real opportunity for
actual confusion to occur. In any event, it must be
remembered that evidence of actual confusion is hard to come
by and that the test under Section 2(d) of the Act is not
actual confusion but likelihood of confusion.

4In reaching this conclusion, we accorded no weight to the
testimony of Richard Perkins, a buyer for Arbor Drugs. Although
Mr. Perkins testified that he associates the term BODY BASICS
with opposer, it was unclear whether this association began
during the period of analogous use or after this period when
BODY BASICS was used in a trademark manner.
Opposition No. 89,271
14
We find that purchasers familiar with opposer's use of
the term BODY BASICS in connection with health and fitness
products, including massagers for home use, would be likely
to believe, upon encountering applicant's hand held
massagers, that the respective products originated with the
same entity.
Decision: The opposition is sustained.
R. F. Cissel
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board