La Mer Technology, Inc.v.Oceana Holding, Inc.

Trademark Trial and Appeal Board

Feb 21, 2013

No. 91194479 (T.T.A.B. Feb. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

La Mer Technology, Inc.
v.
Oceana Holding, Inc.
_____

Opposition No. 91194479
against Serial No. 77833419
_____

Michael Chiappetta and Barbara A. Solomon of Fross Zelnick Lehrman Zissu PC,
for La Mer Technology, Inc.
Eric J. Goodman and David A. Berstein of Goodman Mooney & Berstein LLP, for
Oceana Holding, Inc.
_____

Before Bucher, Holtzman and Wolfson,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Oceana Holding, Inc. (“applicant”) seeks registration on the Principal Register
of the mark Mer de Vie (in standard character format) for “anti-aging cream; beauty
serums; eye cream; face and body creams; facial cleansers; night cream; sunscreen
creams,” in International Class 3.1

1 Application Serial No. 77833419 was filed on September 23, 2009, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce. The English translation of
“Mer de Vie” in the mark is “Sea of Life.”
Opposition No. 91194479
2

La Mer Technology, Inc. (“opposer”) filed a notice of opposition on the ground of
priority and likelihood of confusion. Opposer alleges that applicant’s mark, when
applied to applicant’s goods, so resembles eighteen composite marks containing the
term “La Mer” that opposer had previously used and registered as to be likely to
cause confusion, to cause mistake, or to deceive.
Applicant, in its answer, admits that opposer is the owner of the claimed
registrations, but denies the remaining salient allegations.
I. The Record
The record includes the pleadings and the file of the opposed application. The
parties also stipulated to entry into evidence direct trial testimony by declaration,
subject to the opposing party’s right to take oral cross-examination.
Opposer has submitted the following evidence:
• Transcript of the testimonial declaration of Ms. Ada Lien, Vice President,
Global Marketing for La Mer Technology, Inc., dated October 20, 2011, with
Exhibits A – K;
• Transcript of the testimonial declaration of Ms. Lesley Moradian, Vice
President and Senior Trademark Counsel of La Mer Technology, Inc., dated
October 27, 2011, with Exhibits L – M;
• Opposer’s First Notice of Reliance on Discovery Responses and Deposition
Testimony and Exhibits, dated November 11, 2011, with Exhibits N – S;
• Opposer’s Second Notice of Reliance on Discovery Responses and Deposition
Testimony and Exhibits (Confidential), dated November 11, 2011, with
Exhibit T;
Opposition No. 91194479
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• Opposer’s Third Notice of Reliance on Internet Documents such as web pages
from retailers such as Saks Fifth Avenue, Neiman Marcus, Bergdorf
Goodman, etc., dated November 11, 2011, with Exhibit U; and
• Opposer’s Fourth Notice of Reliance on U.S. Trademark Registrations, dated
November 11, 2011, with Exhibit V;
Applicant has submitted the following evidence:
• Applicant’s testimonial declaration of Xeni Kara “Sandy” Polymeropoulos,
dated December 29, 2011. Opposer then cross-examined Ms. Polymeropoulos
by telephone on January 11, 2012.
• Applicant’s testimonial declaration of Spiros Cheng, dated December 20,
2011, which included Exhibits A – C.
• Applicant’s Notice of Reliance on U.S. Registration No. 3874663 for its PEAU
FRAICHE mark.
Both parties have filed briefs.
II. Standing
Opposer established its standing to oppose registration of the involved
application. In particular, opposer properly made of record its pleaded registrations
of various LA MER and … DE LA MER marks registered in connection with a wide
variety of skin care preparations. Thus, opposer has shown that it is not a mere
intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982).
Opposition No. 91194479
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III. Priority
In view of opposer having established that it is the owner of the following
eighteen valid and subsisting registrations of its LA MER and … DE LA MER marks,
opposer’s priority is not in issue with respect to skin care preparations. King Candy,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974):
CRÈME DE LA MER for, inter alia, “cosmetics – namely, skin crème and
skin moisturizer” in International Class 3;2
LA MER for, inter alia, “cosmetics – namely, skin crème and
skin moisturizer” in International Class 3;3
EMULSION DE LA MER for “skin care preparations, namely, moisturizing
lotion” in International Class 3;4
LA MER for “cosmetics, namely, skin care preparations,
skin cleansing lotion, skin cleansing gel, skin tonic,
skin moisturizing cream and lotion” in Int. Cl. 3;5
TONIQUE DE LA MER for “skin care preparations, namely skin tonic in
the form of lotion” in International Class 3;6
SERUM DE LA MER for “skin care preparations, namely skin lotion” in
International Class 3;7

2 Registration No. 1245722 issued on July 19, 1983; renewed. The words “de la Mer” are
French for the words “of the Sea.” No claim is made to the exclusive right to use the word
“Crème” apart from the mark as shown.
3 Registration No. 1339888 issued on June 11, 1985; renewed. The word “La Mer” is French
for “the Sea.”
4 Registration No. 2261456 issued on July 13, 1999; renewed. The translation of the mark
is “Emulsion of the Sea.”
5 Registration No. 2276149 issued on September 7, 1999; renewed. The English translation
of the term “La Mer” is “the Sea.”
6 Registration No. 2524825 issued on January 1, 2002; renewed. The translation of the
mark is “Tonic of the Sea.” No claim is made to the exclusive right to use the word
“Tonique” apart from the mark as shown.
7 Registration No. 2524828 issued on January 1, 2002; renewed. The translation of the
mark is “Serum of the Sea.” No claim is made to the exclusive right to use the word
“Serum” apart from the mark as shown.
Opposition No. 91194479
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NETTOYANT DE LA
MER
for “skin care preparations, namely skin cleansing
gel” in International Class 3;8
BAUME DE LA MER for “skin care preparations, namely skin balm” in
International Class 3;9
LOTION DE LA MER for “skin care preparations, namely skin lotion” in
International Class 3;10
CRÈME DE LA MER for “cosmetics, namely, skin care preparations,
skin tonic, skin moisturizing cream and lotion” in
International Class 3;11
SOIN DE LA MER for “non-medicated skin care preparations” in
International Class 3;12
BLANC DE LA MER for “non-medicated skin care preparations” in
International Class 3;13

8 Registration No. 2524829 issued on January 1, 2002; renewed. The translation of the
mark is “Cleanser of the Sea.” No claim is made to the exclusive right to use the word
“Nettoyant” apart from the mark as shown.
9 Registration No. 2552358 issued on March 26, 2002; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The translation of the mark is “Balm of the Sea.” No
claim is made to the exclusive right to use the word “Baume” apart from the mark as
shown.
10 Registration No. 2630606 issued on October 8, 2002; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The translation of the mark is “Lotion of the Sea.” No
claim is made to the exclusive right to use the word “Lotion” apart from the mark as shown.
11 Registration No. 2751557 issued on August 19, 2003; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The English translation of the term “Crème de la Mer”
is “Cream of the Sea.” No claim is made to the exclusive right to use the word “Crème”
apart from the mark as shown.
12 Registration No. 2821780 issued on March 9, 2004; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The English translation of the term “Soin de la Mer” in
the mark is “Care of the Sea.”
13 Registration No. 3098736 issued on May 30, 2006; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The English translation of “Blanc de la Mer” is “White of
the Sea.”
Opposition No. 91194479
6

CONCENTRE DE LA
MER
for “non-medicated skin care preparations” in
International Class 3;14
SKINCOLOR DE LA
MER
for “cosmetics” in International Class 3;15 and
LA MER for “cosmetic brushes; cosmetic applicators,
namely, sponges and foam applicator sticks for
applying cosmetics” in International Class 21;16

for “cosmetics; non-medicated skin care
preparations” in International Class 3.17
BRUME DE LA MER for “cosmetics; non-medicated skin care
preparations” in International Class 3;18
LA MER for, inter alia, “non-medicated skin care
preparations; cosmetics; body and beauty care
cosmetics” in International Class 3; and
“retail store services featuring personal care
products, cosmetics, toiletries, bath and body
products, skin care products, and beauty
treatments; online retail store services featuring
personal care products, cosmetics, toiletries, bath
and body products, skin care products, and beauty
treatments” in International Class 35.19

14 Registration No. 3139726 issued on September 5, 2006; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The foreign wording in the mark translates into English
as “Concentrate of the Sea.”
15 Registration No. 3347652 issued on December 4, 2007. The foreign wording in the mark
translates into English as “Skincolor of the Sea.”
16 Registration No. 3424210 issued on May 6, 2008. The foreign wording in the mark
translates into English as “the Sea.”
17 Registration No. 3440482 issued on June 3, 2008. The foreign wording in the mark
translates into English as “the Sea.” Color is not claimed as a feature of the mark.
18 Registration No. 3622569 issued on May 19, 2009. The foreign wording in the mark
translates into English as “Mist of the Sea.”
19 Registration No. 3637492 issued on June 16, 2009. The foreign wording in the mark
translates into English as “the Sea.”

Opposition No. 91194479
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IV. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Relationship of the Goods
We first turn our attention to the relationship of the goods as they are identified
in the registrations and application. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). The goods identified by applicant are “anti-aging cream; beauty serums;
eye cream; face and body creams; facial cleansers; night cream; sunscreen creams.”
Opposer’s registrations broadly list skin care preparations identified variously as
creams, lotions, tonics, moisturizers, and balm, as well as cosmetics. Moreover,
Opposition No. 91194479
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opposer’s LA MER service mark, Reg. No. 3637492, for retail store services features
an even wider range of personal care products, cosmetics, toiletries, bath and body
products, skin care products, and beauty treatments.
We find in applying our well-established legal principles to the facts of this
case, that applicant and opposer are selling legally identical skin care products.
As a result, this critical du Pont factor weighs in favor of a finding of likelihood
of confusion.
B. Channels of Trade
Because the parties’ goods are legally identical, and neither party has
limited its trade channels, it follows that the trade channels for the parties’
goods under their respective marks will also be identical. Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant
also testified that it intends to market through retailers such as Neiman Marcus,
Nordstrom and Saks Fifth Avenue – high-end department stores where opposer has
been marketing its line of skin care preparations for years. Accordingly, this
related du Pont factor also weighs in favor of a finding of likelihood of confusion.
C. Consumer Sophistication / Purchaser care
Applicant consistently paints a picture of consumer sophistication and
exalted care on the part of consumers of these goods. In fact, it does appear
likely from this record that the goods of both parties to this litigation may prove
to be located on the higher end of the range of price points for skin care
preparations / face and body creams. However, in this regard, as with the other
Opposition No. 91194479
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du Pont factors, we are bound by the parties’ respective identifications of goods and
the fact that there are no such limitations on either party’s goods. Octocom, 16
USPQ2d at 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.” [internal
citations omitted]). As a result, any arguable sophistication among some of the
prospective purchasers for either or both parties’ goods as argued by applicant
cannot be treated as providing any advantage for the position of applicant
herein. Certainly, while the record demonstrates that some high-end skin care
preparations can be very expensive, consistent with Ms. Polymeropoulos’ cross
examination testimony, other face and body lotions may also be inexpensive, highly
accessible to the average consumer and purchased on impulse. Accordingly, on
balance, we deem this fourth du Pont factor to be neutral in our analysis.
D. Opposer: Family of marks?
Opposer argues that its variety of skin care products bearing the various
composite marks reviewed above, are sold together, promoted together and
advertised together, thereby establishing a recognized “family” of marks ending in
“Mer.” Although opposer argues that, at its root, opposer’s family name is “Mer,”
opposer’s trade name is “La Mer,” and throughout the prosecution of this opposition,
opposer has treated “La Mer” as a house mark. On yet the other hand, most of the
Opposition No. 91194479
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product marks contain the term “de la Mer.” Inasmuch as opposer appears
uncertain about exactly how to identify the family name, we conclude on this record
that opposer cannot rely on the “family of marks” rationale.
E. Comparison of the Marks
At the outset of the discussion of this critical du Pont factor, we note that
where, as here, the parties’ goods are legally identical, less similarity is needed
between the marks at issue for a likelihood of confusion to be found than when
the goods are somewhat different. In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257 (Fed. Cir. 2010) (less similarity needed when marks are used in
connection with virtually identical goods).
Of course, in comparing the marks, we must consider the marks in their
entireties as to appearance, sound, connotation and commercial impression, to
determine the similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at
1692. The test, under this du Pont factor, is whether the marks are sufficiently
similar in terms of their overall commercial impression that confusion as to the
source of the goods offered under the respective marks is likely to result. Because
the similarity or dissimilarity of the marks is determined based on the marks in
their entireties, the analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not
just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). On the other hand, different features may be analyzed to
determine whether the marks are similar. Price Candy Company v. Gold Medal
Opposition No. 91194479
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Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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 a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751. The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Given the number of opposer’s registrations, for convenience the parties’ marks
are reproduced below – opposer’s on the left, applicant’s Mer de Vie mark on the
right. The registered marks all contain within them the term “La Mer.” In five of
the registrations, the only literal
elements are the words “LA MER.”
In many of the remaining composite
marks, the structure is basically a
generic (and disclaimed) term,
followed immediately by the words
“DE LA MER."
As to appearance and sound, there are noticeable differences in the parties’
marks. The first word/syllable in applicant’s mark is the word “Mer” while the same
term is the final word/syllable in all eighteen of opposer’s registered marks.
However, opposer’s leading, generic terms (meaning “balm,” “cleanser,”
“concentrate,” “cream,” “emulsion,” “lotion,” “serum,” “skin-color” and “tonic”) are
Opposition No. 91194479
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largely lacking in distinctiveness, and this is one “ … commonly accepted rationale
for giving less weight to a portion of a mark.” National Data Corp., 224 USPQ at
751.
On the other hand, in focusing on the recollection of the average U.S.
purchaser of skin care preparations, we note that both parties’ marks are in the
French language. Many of opposer’s marks contain the expression “de la Mer”
while applicant’s mark begins with “Mer de … ” These foreign words may well be
seen as completely arbitrary to many U.S. consumers. Moreover, the terms “Mer”
and “de” are present in both parties’ marks. Accordingly, especially for consumers
who may not be inclined or able to translate these terms into the English language,
this would appear to present strong similarities as to appearance and sound in two
of the three syllables making up applicant’s mark.
As to connotation, virtually all of opposer’s registrations contain a translation
for the word “Mer” as “Sea.” For those consumers who are aware of this equivalence,
a mental picture emerges of “sea” or “the sea.” This is undoubtedly the consistent
meaning that even opposer’s minimally-bilingual customers will take away from the
trademark applied to this line of skin care preparations. As noted above, “Mer” is
also the first term in applicant’s mark. Applicant argues that whenever one
enunciates the term, “Mer de Vie,” the spoken emphasis will inevitably be placed on
the final word “Vie.” Opposer disagrees with this as a general rule. In any case,
there is no correct pronunciation of a trademark, and consumers may pronounce a
mark differently than intended by the brand owner. See In re Viterra Inc., 671 F.3d
Opposition No. 91194479
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1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) and Centraz Indus. Inc. v. Spartan
Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006). Yet in making comparisons as to
connotations, applicant does translate its mark “Mer de Vie” as “Sea of Life,” and
this seems to have connotations similar to opposer’s frequently used terms, namely
“sea,” “the sea,” or “of the sea.”
Despite the appearance and sound differences, the record offers substantial
evidence that the parties’ respective marks convey a similar commercial impression.
As noted above, opposer’s disclaimed words (e.g., “emulsion,” “lotion,” “serum,” etc.)
are largely lacking in distinctiveness such that the expression “de la Mer” is the
dominant and distinguishing element of registrant’s marks. See Dixie Restaurants,
41 USPQ2d at 1533-34 (holding that DELTA is the dominant portion of the mark
THE DELTA CAFÉ where the disclaimed word CAFÉ is descriptive of applicant’s
restaurant services). Thus, the dominant portion of opposer’s mark imparts an
overall commercial impression that emphasizes “the sea,” a similar impression
created by applicant’s “Mer de Vie” mark, or “Sea of Life.” Even though “Vie” is
missing from opposer’s marks, as to connotation and overall commercial impression,
the similarities in the marks outweigh the differences when compared in their
entireties, and we find that the respective marks create similar overall commercial
impressions.20

20 Furthermore, as to those of opposer’s registrations where the leading word within the
composite mark is not generic or highly descriptive, the more ephemeral commercial
impressions created by “the care of the sea,” “the white of the sea,” and the “the mist of the
sea” do nothing to further distinguish these marks from applicant’s “Sea of Life.”
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Applicant argues at length that the likelihood of confusion is diminished
because it plans to use its house mark, PEAU FRAICHE, along with fancifully
designed packaging. Of course, it is well settled that we must consider the mark
sought to be registered, extraneous of other matter, and here, applicant’s house
mark and envisioned trade dress are not features of the applied-for mark. See
Carefirst of Md., Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1508
(TTAB 2005); Blue Cross & Blue Shield Association v. Harvard Community Health
Plan, 17 USPQ2d 1075 (TTAB 1990); and The State Historical Soc’y of Wis. v.
Ringling Bros. Barnum & Bailey Combined Shows, Inc., 190 USPQ 25, n. 3 (TTAB
1976).
In summary, we find that this critical du Pont factor favors a finding of a
likelihood of confusion.
F. Third-party Uses
The sixth du Pont factor requires consideration of any evidence pertaining to
“the number and nature of similar marks in use on similar goods.” Although
applicant makes allegations in its brief that it has uncovered evidence of third-party
usage of the term “Mer” in connection with luxury skin care products, we find that
applicant has failed to show consumer recognition of any third party using “Mer”-
formative marks for skin care products in the U.S. Hence, this du Pont factor is, at
best for applicant, a neutral factor in our likelihood of confusion determination.
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G. Strength of the Mark of the Cited Registration
As seen above in our discussion of the connotation of opposer’s marks, we find
opposer’s various marks to be either arbitrary or at worst only slightly suggestive as
applied to skin care products, and hence, conceptually strong marks.
Moreover, under this du Pont factor, we turn the focus to the issue of the
commercial strength of the marks. Opposer argues that it has made a clear showing
of the accumulated goodwill surrounding its La Mer marks. We concur in
concluding that the instant record is replete with evidence of sales and advertising
as well as the breadth of the exposure of opposer’s La Mer marks in nationwide
periodicals, on the Internet, through celebrity endorsements, in unsolicited articles,
and in connection with prominent media awards.
The parties have entered into a stipulated protective order under which
opposer’s sales and advertising numbers have been deemed “confidential.” While we
are precluded from indicating the specifics, suffice it to say that opposer’s annual
sales revenues since 2007 are fairly impressive. The national sales volume of
opposer’s La Mer products places it among the top ten prestige skin care brands in
the U.S.
Likewise, opposer’s annual promotional expenditures are substantial. Typical
magazines and news media outlets where opposer advertises its La Mer products
include, for example, Elle, Vogue, Vanity Fair, W, Harper’s Bazaar, The New Yorker,
and The New York Times. It advertises on websites such as Google.com, Yahoo.com,
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MSN.com, Instyle.com, Shopzilla.com, Style.com, VanityFair.com, Wmagazine.com
and NYTimes.com.
Major retail outlets that promote and sell opposer’s products include Neiman
Marcus, Saks Fifth Avenue, Bergdorf Goodman, Nordstrom, Bloomingdales and
Barneys.
Due to opposer’s success, the La Mer brand has received unpaid endorsements
from celebrities such as Halle Berry, Eva Longoria, Rihanna, Katy Perry, Amy
Adams, Christina Appelgate, Jennifer Lopez, Brooke Shields, Fergie, Johnny Depp,
Jessica Alba, Jennifer Garner, January Jones, Kristen Bell, Leighton Meester,
Rosario Dawson, Ali Larter, Kimora Lee Simmons, Michael Kors, Carey Mulligan,
Jessica and Ashlee Simpson, and Nicole Richie. In fact, during a recent three-year
period, there were more than 1500 unpaid references to La Mer branded products in
many different media outlets. Printed references to the La Mer brand often employ
words like “famous,” “iconic,” “legendary,” “the gold standard,” etc.
Although we may not be comfortable going so far as to conclude that the La Mer
mark is “famous” for purposes of this proceeding (i.e., consistent with the
demanding standards of the Lanham Act), based upon the evidence of record
bearing on sales, marketing expenditures and the degree of market exposure, we do
conclude that opposer’s La Mer marks have garnered a high degree of renown
amongst the relevant public in the field of skin care preparations, that opposer has
established by a preponderance of the evidence that its mark is well known, and
Opposition No. 91194479
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hence should be accorded a relatively wide scope of protection. This critical du Pont
factor supports a finding of likelihood of confusion herein.
H. “Bad Faith” on the part of applicant?
Opposer alleges that since 2005, it has endeavored to raise awareness of World
Ocean Day by partnering with a not-for-profit international ocean-advocacy
organization known as Oceana. In this
connection, it has offered limited-
edition products that have generated
millions of dollars of sales. Opposer
alleges that to the extent its consumers
know of the La Mer – Oceana
relationship, and then encounter
applicant’s trade name, Oceana
Holding, Inc., in connection with its
Mer de Vie products, this will only
exacerbate the already high likelihood
of confusion, such that those consumers will assume that Mer de Vie is another
limited edition product that opposer, La Mer, created in association with the not-
for-profit advocacy group known as Oceana.
Finally, Ms. Polymeropoulos claims that she learned the French term “Mer de
Vie” in her youth from her Grandmother (referencing aspects of their French and
Greek heritage), and years ago decided she wanted to use it on her own skin care
Opposition No. 91194479
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products. Additionally, she claims that despite her long term interest in this field,
she had never heard of opposer’s La Mer brand of products. However, inasmuch as
Ms. Polymeropoulos did become aware through a trademark search report of
opposer’s La Mer marks immediately prior to filing this trademark application,
opposer alleges bad faith on the part of applicant.
In the event that we had doubts about a likelihood of confusion after balancing
all the other du Pont factors, we may have found it necessary to make a
determination as to the probative value of these charges. However, inasmuch as
most of the du Pont factors reviewed above point to a likelihood of confusion, we
note but do not decide the question of applicant’s alleged bad faith.
I. Balancing the factors
In view of the facts that the cited marks are both conceptually and commercially
strong, that the goods are legally identical, and that the marks are similar as to
overall commercial impressions, we find that applicant’s registration of the mark
Mer de Vie is likely to cause confusion.
Decision: The opposition based on likelihood of confusion under Section 2(d) of
the Trademark Act is sustained, and registration to applicant is hereby refused.