International Beauty Exchangev.GIP.C.I., Inc.

Trademark Trial and Appeal Board

Aug 26, 2008

No. 92045813 (T.T.A.B. Aug. 26, 2008)

Mailed: August 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

International Beauty Exchange
v.
GIP.C.I, Inc.
_______

Cancellation No. 92045813
to Registration No. 2781794
issued on November 11, 2003
_______

Martin P. Hoffman of Hoffman Wasson & Gitler for
International Beauty Exchange.

Chie-Young Chyang, Esq. for GIP.C.I, Inc.
_______

Before Walters, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

International Beauty Exchange filed its petition to
cancel the registration of GIP.C.I., Inc. for the mark SURE
WHITE for “cosmetics, namely, soap, skin gel, skin whitening
creams, sunscreen, skin moisturizing serum, skin lotion not
sold, distributed, or otherwise promoted through grocery,
drug, or convenience stores,” in International Class 3.1

1 Registration No. 2781794, issued November 11, 2003.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92045813
2
The registration includes a disclaimer of WHITE apart from
the mark as a whole.
As a ground for the petition, petitioner asserts that
respondent’s mark, when applied to respondent’s goods, so
resembles petitioner’s previously used mark SURE WHITE for
skin care products as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
Petitioner also asserts fraud as a ground for the
petition, alleging that respondent was petitioner’s customer
for petitioner’s SURE WHITE skin care products; that
respondent had actual knowledge of petitioner’s prior right
in the confusingly similar mark SURE WHITE for skin care
products; that respondent knowingly misstated a material
fact upon which the USPTO relied in granting the subject
registration when respondent averred in its application that
“no other person, firm, corporation, or association has the
right to use the mark in commerce.”
Respondent, in its answer, denied the salient
allegations of the claim and asserted fraud and laches as
affirmative defenses, alleging that respondent is, in fact,
the owner of the SURE WHITE mark for skin care products;
that petitioner has been respondent’s customer for such
goods under the SURE WHITE mark; and that petitioner filed a
trademark application on March 7, 2006, in which it
knowingly made the material false statement that it owns the
Cancellation No. 92045813
3
mark; and that petitioner waited more than five years after
knowing of respondent’s mark to file this petition to
cancel.
The Record
The record consists of the pleadings; the file of the
involved registration; the testimony deposition by
petitioner of Jacob Aini, a principal and officer of
petitioner, with accompanying exhibits; and the testimony
deposition by respondent of Gary McHeileh, a principal and
officer of respondent, with accompanying exhibits.2 Both
parties filed briefs on the case.
As a procedural matter, we note that petitioner
attached to its reply brief documents allegedly pertaining
to proceedings in France. This evidence is untimely and has
not been considered. Our decision would remain the same
even if we had considered this evidence. Not only is the
alleged court document in the French language with no
English translation, but foreign trademark registration and
proceedings relative thereto are irrelevant to the
registrability of marks in the United States.
Factual Findings
Petitioner has established that it is a wholesaler of,
inter alia, skin care products; that it has bought skin care

2 Documents submitted by the parties with their original pleadings are
not of record for purposes of this decision and have not been considered
Cancellation No. 92045813
4
products identified by the mark SURE WHITE; and that it has
sold these products to retailers, including to Home Boys
Inc., a company related to petitioner. Petitioner is
principally located in the New York City metropolitan area.
In both the testimony of petitioner’s witness, Jacob Aini,
and the invoices and other documents attached thereto as
exhibits, petitioner’s asserted mark was referred to
variously as SURE WHITE and SURE AND WHITE. It is unclear
whether these references are to different marks identifying
different products, or whether one of these references is a
misstatement.
Respondent has established that it is a wholesaler of,
inter alia, skin care products; that it has bought skin care
products identified by the mark SURE WHITE; and that it has
sold these products to retailers. Respondent is principally
located in the Miami metropolitan area.
The record establishes that SURE WHITE is a trademark
that is used to identify a line of skin care products; that
these products are manufactured, bottled and labeled in
Switzerland and shipped to, inter alia, the United States
for sale; and that, as wholesalers and importers, both
petitioner and respondent have received shipments of the
SURE WHITE product from Switzerland. The record also

to the extent that they are not duplicated by exhibits submitted during
the trial period.

Cancellation No. 92045813
5
establishes that the SURE WHITE product packaging design was
developed in Switzerland and communications in this regard
were with Peter Dürst, located in Switzerland, by both
parties.
The evidence establishes that the parties have, over
the years, conducted business with one another; that their
business dealings are informal in that they have no written
agreements with each other; and that they have often
bartered products rather than exchanging money for products
shipped between them.
The record is conflicting regarding the timing of the
development and use of the mark SURE WHITE for skin care
products and, as between the parties, who owns the mark in
the United States. At this point, we note that both parties
have presented evidence about registration of SURE WHITE in
France and sales of products identified by the mark SURE
WHITE and other marks outside the United States. To the
extent that either party seeks to rely on trademark
registration, or use in connection with sales of skin care
products, of this or any other mark outside the United
States, such evidence is irrelevant to the issue of
registrability in the United States and we make no factual
findings in this regard.
We find that the testimony of Mr. Aini and the exhibits
accompanying that testimony are, at times, vague and that
Cancellation No. 92045813
6
this evidence falls short of establishing that petitioner
developed the mark SURE WHITE for use in the United States
in connection with skin care products or that petitioner
exercises control over the use of the mark SURE WHITE for
skin care products or over the quality or manufacture of
such products. Respondent pointed out numerous
contradictions and inconsistencies in petitioner’s testimony
and evidence, to which petitioner did not directly respond.
On the other hand, the testimony of Mr. McHeileh and
the related exhibits for respondent were clear and the
documentary evidence supports Mr. McHeileh’s testimony.
Thus, we find the evidence establishes that respondent
developed the mark SURE WHITE for use in the United States
in connection with skin care products; that respondent
developed the packaging, ordered and controlled the
manufacture of, and developed and controlled the promotion
of SURE WHITE skin care products in the United States.
Respondent did this in partnership with Mr. Dürst, who was
located in Switzerland and who later became the agent,
rather than the partner, of respondent.
The evidence also establishes that some shipments of
the SURE WHITE skin care products from Switzerland went to
respondent directly, some shipments went to petitioner
directly, and some shipments went to respondent via
petitioner and to petitioner via respondent. However, at
Cancellation No. 92045813
7
all times, shipments from Switzerland were at the behest of
respondent, who exercised control over the manufacture of
the skin care products, the design of the packaging
therefor, and the use of the mark SURE WHITE in connection
therewith.
Standing
A plaintiff must have “a ‘real interest’ in the outcome
of a proceeding in order to have standing.” Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). “To establish a reasonable basis for a belief that
one is damaged by the registration sought to be cancelled, a
petition may assert a likelihood of confusion which is not
wholly without merit.” Lipton Industries v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).3
Petitioner is a wholesaler of skin care products and it has
bought and sold such products identified by the mark SURE
WHITE. Therefore, we conclude that petitioner has
established its standing in this proceeding.
Burden of Proof
Petitioner, as the plaintiff herein, bears the burden
of proof with respect to its claims of priority of use,
likelihood of confusion and fraud. See, e.g., Bose Corp. v.
QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305

3 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we construe
Cancellation No. 92045813
8
(Fed. Cir. 2002) (“[t]he burden of proof rests with the
opposer … to produce sufficient evidence to support the
ultimate conclusion of [priority of use] and likelihood of
confusion”); Sanyo Watch Co., Inc. v. Sanyo Elec. Co., Ltd.,
691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (“[a]s the
opposer in this proceeding, appellant bears the burden of
proof which encompasses not only the ultimate burden of
persuasion, but also the obligation of going forward with
sufficient proof of the material allegations of the Notice
of Opposition, which, if not countered, negates appellee's
right to a registration”); and Clinton Detergent Co. v.
Proctor & Gamble Co., 302 F.2d 745, 133 USPQ 520, 522 (CCPA
1962) (“[o]pposer … has the burden of proof to establish
that applicant does not have the right to register its
mark”).
Petitioner must establish its pleaded case of priority
and 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). In order for a
plaintiff to prevail on a claim of likelihood of confusion,
petitioner must prove it has proprietary rights in the term
it relies upon to demonstrate likelihood of confusion as to
source.

the requirements of those two sections of the Lanham Act consistently.”
Ritchie, 50 USPQ2d at 1025 n. 2.

Cancellation No. 92045813
9
The standard of proof for a fraud claim is the rigorous
clear-and-convincing-evidence standard, and it is strictly
applied. Standard Knitting Ltd. v. Toyota Jidosha Kabushiki
Kaisha, 77 USPQ2d 1917, 1926 (TTAB 2006); Smith
International Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB
1981). See also Torres v. Cantine Torresella S.r.L., 808
F.2d 46, 1 USPQ2d 1483, 1484-85 (Fed. Cir. 1986); Medinol
Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1209 (TTAB 2003);
Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23
USPQ2d 1064 (TTAB 1992); First International Services Corp.
v. Chuckles Inc., 5 USPQ2d 1628, 1636 (TTAB 1988).
Analysis
While petitioner has raised numerous issues in this
case, the primary issue concerns who owns the mark in the
subject registration. Petitioner attempts to show that
respondent’s use of the mark SURE WHITE in connection with
skin care products inured to petitioner’s benefit by
maintaining that petitioner authorized respondent to use the
mark. Both parties agree that, while they have conducted
business with one another for several years, they have never
had any written agreements between them. Thus, any
authorization must have been the result of an implied
license. “It is irrelevant whether the parties thought of
the arrangement at the time in terms of an implied license.
The test for whether or not an implied license existed is
Cancellation No. 92045813
10
based solely on the objective conduct of the parties.”
Villanova University v. Villanova Educational Foundation
Inc., 123 F. Supp.2d 293, 58 USPQ2d 1207, 1219 (E.D. Pa.
2000). Here, the objective conduct of the parties does not
support the existence of an implied license from petitioner
to respondent. Rather, the evidence supports the finding
that respondent is the owner of the mark SURE WHITE for skin
care products in the United States and, thus, any implied
license runs from the respondent, as owner, to the
petitioner, as licensee.
It was incumbent upon petitioner to submit evidence to
demonstrate its proprietary rights in its claimed mark.
Petitioner, having the burden of proof herein, failed to
meet its burden in this cancellation proceeding. In view
thereof, it is not necessary for us to further consider
petitioner’s claims of priority and likelihood of confusion
or fraud; nor to consider respondent’s affirmative defenses
of laches and fraud.
Decision: The petition to cancel is denied.