Lever Investments Corp. and Conopco, Inc.v.Daniel F. Ponder

Trademark Trial and Appeal Board

Jun 15, 1998

No. 91102455 (T.T.A.B. Jun. 15, 1998)

Paper No. 15
HANAK/MD
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Lever Investments Corporation and Conopco, Inc. d/b/a Lever
Brothers Company
v.
Daniel F. Ponder
_____
Opposition No. 102,455
to application Serial No. 74/719,261
filed on August 23, 1995
_____
Peter M. Mendelson for Lever Investments Corporation and
Conopco, Inc. d/b/a Lever Brothers Company.
Samuel D. Littlepage of Dickinson, Wright, Moon, Van Dusen &
Freeman for Daniel F. Ponder.
______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Daniel F. Ponder (applicant) seeks to register SUNLITE
in typed capital letters for a wide array of goods and
services in four classes (3, 16, 25 and 41) as outlined
below. The intent-to-use application was filed on August
23, 1995.
Opposition No. 102,455
2
Skin lotions, essential oils for
personal use, sun block preparations in
International Class 3;
Printed materials, namely, decals,
greeting cards, flash cards, posters and
newsletters and magazines featuring sun
awareness safety topics in International
Class 16;
Clothing, namely, shirts, pants,
sweaters, swimsuits, jackets, hats, and
caps in International Class 25;
Educational services, namely, conducting
seminars and conferences in the field of
sun awareness safety and distributing
course materials in connection
therewith, and development and
dissemination of educational materials
of others in the field of sun awareness
safety in International Class 41.
On May 23, 1996 Lever Investments Corporation &
Conopco, Inc. d/b/a Lever Brothers Company (opposers) filed
a notice of opposition alleging that long prior to August
23, 1995, opposers both used and registered the mark
SUNLIGHT for dishwashing detergent. Furthermore, opposers
alleged that the contemporaneous use of SUNLITE by applicant
for its various goods and services and SUNLIGHT by opposers
for dishwashing detergent is likely to cause confusion,
mistake and deception.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition.
Both parties have filed briefs. Neither party
requested a hearing.
Opposition No. 102,455
3
The record in this case consists of the depositions
(with exhibits) of Thomas McLoughlin (brand manager at
opposer Lever Brothers Company for its SUNLIGHT dishwashing
detergent) and applicant Daniel F. Ponder. Opposers also
made of record by a notice of reliance a certified title and
status copy of Registration No. 1,148,608 for the mark
SUNLIGHT for “dishwashing detergent.” This registration –-
in the name of opposer Lever Investments Corporation –-
issued on March 24, 1981 with a claimed first use date of
April 25, 1979.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and
services and the similarities of the marks. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [and services]
and differences in the marks.”).
Considering first the marks, in this case opposers’
mark SUNLIGHT and applicant’s mark SUNLITE are identical in
terms of pronunciation and connotation, and are virtually
identical in terms of visual appearance.
Turning to a consideration of opposers’ goods and
applicant’s goods and services, two propositions must be
kept in mind. First, when “the marks [of the parties] are
Opposition No. 102,455
4
the same or almost so [as is the case here], it is only
necessary that there be a viable relationship between the
goods or services in order to support a holding of
likelihood of confusion.” In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). See also 3
J. McCarthy, McCarthy on Trademarks and Unfair Competition
Section 23:20 at page 23-46 (4th ed. 1998).
Second, for the purposes of our likelihood of confusion
analysis, applicant’s four class application is treated as
four separate applications. 2 J. McCarthy, McCarthy on
Trademark and Unfair Competition Section 19:56 at page 19-96
(4th ed. 1998). That is to say, this Board makes separate
determinations as to likelihood of confusion between
opposers’ mark SUNLIGHT for dishwashing detergents vis-a-vis
applicant’s mark SUNLITE for (1) skin lotions, essential
oils for personal use, sunblock preparation; (2) printed
materials; (3) clothing; and (4) educational services.
Considering first applicant’s printed materials,
clothing and educational services, we find that despite the
fact that applicant’s mark and opposers’ mark are virtually
identical, opposers have simply failed to establish that
there is any viable relationship between the foregoing goods
and services of applicant and opposers’ dishwashing
detergents. Accordingly, we find that there is no
likelihood of confusion resulting from the contemporaneous
Opposition No. 102,455
5
use of SUNLIGHT for dishwashing detergents and SUNLITE for
printed materials, clothing and educational services. We
note that in their main brief, opposers –- in discussing the
issue of likelihood of confusion –- singled out for
discussion solely applicant’s “skin lotions” and “essential
oils for personal use.” (Opposers’ brief pages 13-15). In
their reply brief, opposers made the following statement at
page 9: “Used as hand cleansers, opposers’ SUNLIGHT
products are, in their present form, clearly related to or
complementary with applicant’s skin lotions, essential oils
for personal use, and sun block preparations.” In neither
their main brief nor their reply brief did opposers ever
allege that applicant’s use of SUNLITE on printed materials,
clothing or educational services is likely to cause
confusion with opposers’ use of SUNLIGHT on dishwashing
detergents.
However, opposers have demonstrated a viable
relationship between dishwashing detergents and at least
some of applicant’s class 3 goods (namely, skin lotions)
such that contemporaneous use of nearly identical marks on
both types of products would result in a likelihood of
confusion. To elaborate somewhat, the record reveals that
SUNLIGHT dishwashing detergents, like many other brands of
dishwashing detergents, come in two basic types. One is for
use in automatic dishwashers. The second is for use in
Opposition No. 102,455
6
washing dishes by hand. Opposers have used their SUNLIGHT
mark in connection with a hand dishwashing detergent
continuously since 1979. (Of course, priority of use is not
an issue in this proceeding because opposers have properly
made of record Registration No. 1,148,608 for SUNLIGHT for
“dishwashing detergent.”) Hand dishwashing detergents are
used not only to wash dishes, but also to wash hands.
(McLoughlin dep. 45). Indeed, the practice of utilizing
hand dishwashing detergents to wash not only dishes but also
hands has become so widespread that a number of major
competitors of opposers have introduced into the market
products which are labeled both as dishwashing detergents
and as for hand soaps. For example, Procter & Gamble
markets “DAWN concentrated dishwashing detergent
antibacterial hand soap.” (Opposers’ exhibit 13). In
similar fashion, the Colgate-Palmolive Company markets
“PALMOLIVE concentrated dishwashing liquid antibacterial
hand soap.” (Opposers’ exhibits 14). Finally, The Dial
Corp. markets “DIAL dishwashing detergent and antibacterial
hand cleanser.” (Opposers’ exhibit 15).
Moreover, the record reflects that opposers are
considering introducing under the SUNLIGHT mark a similar
dual purpose product designed specifically to wash both
dishes and hands. See Mcloughlin dep. 46, which has now
been declassified.
Opposition No. 102,455
7
However, even disregarding opposers’ future plans, the
fact remains that for many years opposers have marketed
under the SUNLIGHT mark a product which is used not only to
wash dishes, but also to wash hands. As previously noted,
one of applicant’s class 3 goods are “skin lotions.” While
applicant testified that “the key purpose” of his skin
lotions “would be to protect a person’s skin from sun
damage” (Ponder dep. 14), the fact remains that, as
described in the application, the term “skin lotions”
contains no limitation. In other words, the term “skin
lotions” contains no limitations as to reasons for typical
use (e.g. sun protection, moisturizing etc.); areas of use
on the body (e.g. on the hands, on the face etc.) or normal
channels of trade. Thus, applicant’s chosen description of
goods (skin lotions) is broad enough to include lotions
which are used on the hands and which are sold in drug
stores, grocery stores and all other normal channels of
trade for skin lotions in general. Of course, as to
channels of trade, dishwashing detergents are also sold in
drug stores and grocery stores. (McLoughlin dep. 11).
We find that use of virtually identical trademarks
(SUNLIGHT/SUNLITE) on (1) products which are commonly used
to wash hands (i.e. hand dishwashing detergents) and on (2)
skin lotions which, of course, can be used on the hands, is
likely to result in confusion. To be perfectly clear, our
Opposition No. 102,455
8
finding of likelihood of confusion under the foregoing
circumstances is not contingent upon a finding that
opposers’ SUNLIGHT mark is famous. Opposers have
demonstrated that the SUNLIGHT mark has been in use for
nearly two decades; that SUNLIGHT dishwashing detergents
constitute over 10 percent of all dishwashing detergents
sold in the United States (McLoughlin dep. 28); and that
recent annual sales of SUNLIGHT dishwashing detergents have
been in excess of $140 million (McLoughlin dep. 13). The
foregoing demonstrates that opposers’ SUNLIGHT mark is, if
not famous, at least well-known. However, even absent any
showing of notoriety for opposers’ SUNLIGHT mark, we would
find that there exists a likelihood of confusion from the
contemporaneous use of SUNLIGHT on dishwashing detergents
which are also used to wash hands and SUNLITE on skin
lotions which, of course, can be used on hands. Because we
have found that applicant’s use of SUNLITE on skin lotions
would result in a likelihood of confusion, we need not
consider whether applicant’s use of SUNLITE on its other
class 3 goods would also result in a likelihood of
confusion. Tuxedo Monopoly v. General Mills, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Decision: The opposition is dismissed as to
applicant’s “applications” in classes 16, 25 and 41. The
opposition is sustained as to applicant’s “application” in
Opposition No. 102,455
9
class 3. In due course, a registration for the mark SUNLITE
will issue to applicant for his goods in classes 16 and 25
and his services in class 41.
R. L. Simms
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board