L’Oreal USA Creative, Inc.v.Interconsumer Products Limited

Trademark Trial and Appeal Board

Feb 18, 2011

No. 91185552 (T.T.A.B. Feb. 18, 2011)

Mailed:
Feb. 18, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

L’Oréal USA Creative, Inc.
v.
Interconsumer Products Limited
_____

Opposition No. 91185552
to application Serial No. 79038941
filed on February 15, 2007
_____

Robert L. Sherman of Paul, Hastings, Janofsky & Walker LLP
for L’Oréal USA Creative, Inc.

Scott D. Woldow of Smith, Gambrell & Russell, LLP for
Interconsumer Products Limited.
______

Before Grendel, Taylor and Ritchie, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Interconsumer Products Limited (“applicant”) seeks
registration on the Principal Register of the mark NICE &
LOVELY (and design), depicted below, for goods identified in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91185552
2
the application as “perfumery, essential oils, cosmetics and
hair lotions.”1

L’Oréal USA Creative, Inc. (opposer) has opposed
registration of applicant’s mark, alleging priority and
likelihood of confusion under Trademark Act Section 2(d), 15
U.S.C. §1052(d), as the ground for opposition.
Specifically, opposer alleges (in pertinent part) that it
owns Registration No. 1393705,2 which is of the mark DARK &
LOVELY (registered in standard character form; DARK
disclaimed), for goods identified in the registration as
“hair care products, namely, protein shampoo, conditioner,
hair dress/conditioner, finishing sheen spray,

1 Serial No. 79038941, filed on February 15, 2007. The
application includes the following “Description of Mark”
statement: “The mark consists of the following. The color beige
appears in the bottom left rectangle, the color gray appears in
the top right and left side of the rectangle, the color white
appears in the drops in the rectangle, the color purple appears
in the wording ‘NICE’ and ‘LOVELY’ and the color red appears in
the ampersand.” The application also states that “The colors
beige, gray, white, purple, and red are claimed as a feature of
the mark.”

2 Issued on the Principal Register on May 20, 1986; renewed.

Opposition No. 91185552
3
detangling/conditioning shampoo, and deep conditioner.”3
Opposer further alleges that applicant’s mark, as applied to
the goods identified in the application, so resembles
opposer’s previously-registered mark as to be likely to
cause confusion, to cause mistake, or to deceive.
Applicant answered the notice of opposition by denying
the allegations essential to opposer’s claim.
Opposer submitted evidence at trial: applicant did not.
The case is fully briefed.
After careful consideration of the evidence of record
and the arguments of the parties, we sustain the opposition.
The evidence of record includes the pleadings, and, by
rule, the file of applicant’s application. At trial,

3 Opposer also alleged in the notice of opposition (and proved
at trial) its ownership of two other existing registrations,
i.e., Reg. No. 0963797 (issued on July 10, 1973), of the mark
DARK & LOVELY for goods identified in the registration as
“permanent shampoo-in hair color,” and Reg. No. 3262867 (issued
on July 10, 2007), of the mark DARK & LOVELY KIDS for goods
identified in the registration as “hair care, hair styling and
non-medicated hair treatment preparations.” We note here that
in order to prevail in this case, opposer need not establish (and
we need not find) likelihood of confusion as to all of opposer’s
pleaded registrations. A finding of likelihood of confusion as
to any of the pleaded registrations would suffice to establish
opposer’s Section 2(d) ground of opposition. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). We find in
this case that opposer’s Reg. No. 1393705 (referenced above in
the main text) suffices in itself as the basis for our decision
in this case. See discussion infra. Accordingly in this
opinion, we need not address, and in the interest of judicial
economy we shall not address, these other two pleaded
registrations. Cf. In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010); In re Davey Products Pty Ltd., 92 USPQ2d 1198,
1201 (TTAB 2009). (Opposer also asserts a claim of prior common
law rights in its mark(s). However, like opposer’s other
registrations, we need not reach that claim in our decision.)
Opposition No. 91185552
4
opposer submitted the testimony deposition of its officer
Angela Guy and exhibits thereto (“Guy depo.”).4 Opposer
also submitted, via notice of reliance, applicant’s
responses to opposer’s interrogatories.5
To prevail in this opposition proceeding, opposer must
establish (1) its standing to oppose, and (2) at least one
statutory ground of opposition to registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Saul Zaentz
Co. v. Bumb, 95 USPQ2d 1723, 1726 (TTAB 2010).
Opposer has properly made its pleaded Reg. No.
1393705 of record, which shows that the registration is in
effect and is owned by opposer.6 In view thereof, and
because opposer has established that its pleaded Section
2(d) claim is not frivolous, we find that opposer has a real
interest in the outcome of this proceeding and thus a

4 Opposer submitted Ms. Guy’s deposition transcript and exhibits
as part of its notice of reliance. This testimony deposition
should have been filed separately, pursuant to Trademark Rule
2.125(c), 37 C.F.R. §2.125(c). Notwithstanding, because the
deposition otherwise is in proper form, we have considered it.

5 Opposer’s notice of reliance also includes (as Exh. Nos. 28-38)
documents which assertedly were produced by applicant in response
to opposer’s request for production of documents. These
documents are not properly submitted via notice of reliance
alone, and we have not considered them. See Trademark Rule
2.120(j)(3)(ii), 37 C.F.R. §2.120(j)(3)(ii).

6 (Guy depo. at pp. 6-8 and Exhibit 3.) Opposer also made the
registration of record by submitting it as an exhibit to its
notice of opposition. See Trademark Rule 2.122(d)(1), 37 C.F.R.
§2.122(d)(1).

Opposition No. 91185552
5
reasonable basis for believing that it would be damaged by
the issuance to applicant of the registration applicant
seeks. Accordingly, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Cunningham v. Laser Golf Corp., supra, 55 USPQ2d 1842,
1844; see also Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Furthermore, because opposer’s pleaded registration is
of record, Section 2(d) priority is not an issue in this
case as to the mark and goods covered by that registration.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974); Miss Universe L.P. v.
Community Marketing Inc., 82 USPQ2d 1562 (TTAB 2007).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203-04 (Fed. Cir. 2003); Cunningham
v. Laser Golf Corp., supra, 55 USPQ2d 1842, 1845.
We begin our likelihood of confusion analysis with the
second du Pont factor, under which we determine the
similarity or dissimilarity of applicant’s goods, as they
are identified in applicant’s application, and opposer’s
Opposition No. 91185552
6
goods, as they are identified in opposer’s registration.
Applicant’s goods are identified in the application as
“perfumery, essential oils, cosmetics and hair lotions.”
Opposer’s goods as identified in its registration are “hair
care products, namely, protein shampoo, conditioner, hair
dress/conditioner, finishing sheen spray,
detangling/conditioning shampoo, and deep conditioner.”
In this case, we need only and shall only base our
findings under the second du Pont factor on a comparison of
the hair care products identified in opposer’s registration
and the “hair lotions” identified in applicant’s
application. See Baseball America Inc. v. Powerplay Sports
Ltd., 71 USPQ2d 1844 (TTAB 2004).7 See also Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Assuming arguendo that applicant’s “hair lotions” are
not in fact identical to (and merely another name for)
opposer’s “hair care products, namely ... conditioner, hair
dress/conditioner, ... and deep conditioner,” we find that
they are highly similar, complementary and otherwise closely

7 “It is settled ... that in order to prevail on a Section
2(d) ground of opposition, an opposer need not prove priority
and likelihood of confusion as to all of the goods or services
identified in the applicant's application. Rather, if priority
and likelihood of confusion are established as to any of the
goods or services identified in an opposed class of goods or
services, the opposition to registration of the mark as to all
of the goods or services identified in that class will be
sustained.” Baseball America Inc., 71 USPQ2d at 1848 n.9.

Opposition No. 91185552
7
related hair care products. On the face of the respective
identifications of goods themselves, the goods clearly are
similar. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Moreover, the similarity and relatedness of hair lotions and
opposer’s hair care products are established by the fact
that opposer’s line of DARK & LOVELY hair products includes
products that Ms. Guy specifically identified as “hair
lotions.” (Guy depo. at 13, 24 and 39.) Finally, we note
that applicant has presented no evidence to support its
merely conclusory assertion that these respective hair care
products by their nature are unrelated. For these reasons,
we find that the parties’ respective goods are highly
similar under the second du Pont factor, and that this
finding weighs heavily in support of a conclusion that
confusion is likely.
Under the third du Pont factor, we compare the trade
channels and classes of purchasers for the goods. Because
there are no restrictions or limitations in opposer’s and
applicant’s respective identifications of goods, we presume
that the goods are or would be marketed in all normal trade
channels and to all normal classes of purchasers for such
goods. See Packard Press Inc. v. Hewlett-Packard Co., 227
F.2d 1352, 56 USPQ2d 1351, 1355 (Fed. Cir. 2000). Because
the parties’ hair care products by their nature are or would
Opposition No. 91185552
8
include ordinary consumer items, we find that the normal
trade channels for the goods would include ordinary retail
trade channels, including mass merchandisers, drugstores,
and grocery stores. The record establishes that these in
fact are some of the trade channels or intended trade
channels for the parties’ respective goods. (Guy depo. at
26; applicant’s responses to opposer’s Interrogatory Nos. 3,
13 (Opposer’s Notice of Reliance Exh. 27).) Also, opposer
and applicant advertise or intend to advertise their
products in many of the same media, including print and
broadcast media. (Guy depo. at 40; applicant’s response to
opposer’s Interrogatory No. 5 (Opposer’s Notice of Reliance
Exh. 27).) For these reasons, we find that the similarity
of trade channels and classes of purchasers under the third
du Pont factor supports a conclusion that confusion is
likely.
Under the fourth du Pont factor (conditions of
purchase), we find that applicant’s and opposer’s hair care
products by their nature are or would include ordinary and
inexpensive consumer items, which would be purchased by
ordinary consumers with only a normal degree of care. We
find that these conditions of purchase under the fourth du
Pont factor support a conclusion that confusion is likely.
The fifth du Pont evidentiary factor requires us to
consider evidence of the fame of opposer’s mark, and to give
Opposition No. 91185552
9
great weight to such evidence if it exists. See Bose Corp.
v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1309 (Fed. Cir. 2002). Opposer contends that its mark is
famous, relying on the (confidential in part) testimony of
its witness Ms. Guy. After carefully reviewing this
testimony, we find that it is insufficient to establish that
opposer’s mark is a famous mark for purposes of the fifth du
Pont factor. The sales and advertising figures lack
context, as do the market share numbers when considered in
the context of the goods as they are broadly identified in
the registration. The testimony regarding the Praxis study
lacks sufficient detail as to the nature and format of the
study to be of significant probative value on the question
of fame. In short, we find that the evidence of record does
not establish that opposer’s mark is the type of truly
famous mark which would be entitled to the greatly expanded
scope of protection that is afforded to a famous mark under
our case law. For these reasons, we find that the fifth du
Pont factor is neutral in our likelihood of confusion
analysis.
Under the sixth du Pont factor (the number and nature
of similar marks in use on similar goods), we find there to
be no evidence of any such third-party use which might tend
to lessen the scope of protection to which opposer’s mark is
entitled. Applicant has presented no evidence to support
Opposition No. 91185552
10
its mere assertion in its brief that LOVELY is the subject
of other registered trademarks. There is no evidence of
third-party marks which include the combination of an
ampersand and LOVELY, i.e., “& LOVELY.” Given the absence
of evidence, we find that this factor is neutral; it
certainly does not weigh in applicant’s favor.
We turn finally to the first du Pont factor, under
which we determine the similarity or dissimilarity of
applicant’s mark and opposer’s mark when they are viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. See Palm Bay Imports, Inc.,
supra, 73 USPQ2d 1689, 1692.
The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their overall commercial impressions
as to be likely to cause confusion when used on or in
connection with the goods and/or services at issue. This
necessarily requires us to take into account the fallibility
of memory over time and the fact that the average purchaser
retains a general rather than a specific impression of
trademarks. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1468 (TTAB 1988); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
Opposition No. 91185552
11
Comparing the marks in terms of appearance, we find
that they look similar to the extent that both include an
ampersand followed by the word LOVELY. Applicant’s mark
includes a background carrier for the words, but we find
that feature to be de minimis in distinguishing the marks
visually. The stylization of the lettering in applicant’s
mark is not legally significant because opposer’s mark is
registered in standard character form, and thus may be used
and displayed by opposer in stylized lettering similar to
the lettering in applicant’s mark. See Cunningham v. Laser
Golf Corp., supra, 55 USPQ2d 1842, 1847. The words NICE and
DARK are comprised of different-looking letters, but they
also look similar to the extent that they both are four-
letter words. Comparing the marks in their entireties in
terms of appearance, we find that the points of similarity
outweigh the points of dissimilarity.
In terms of sound, we find the marks to be similar to
the extent that “& LOVELY” would be pronounced the same in
both marks, i.e., as “and lovely.” NICE and DARK sound
different, but they are both one-syllable words. Both marks
consist of four syllables, the last three of which are
identical in both marks. In their entireties, we find the
marks to be similar in sound.
In terms of connotation, we find that “& LOVELY” means
the same thing in both marks. NICE and DARK have different
Opposition No. 91185552
12
meanings, but both are simple adjectives that describe
desirable attributes of hair, and both are combined with “&
LOVELY.” Comparing the marks in their entireties, we find
that the identical meaning of “& LOVELY” in the marks
outweighs the difference in meaning of NICE and DARK.
In terms of commercial impression, we find that the
marks are very similar. They both are composite phrases
which are constructed in the same way. They both begin with
a short and suggestive adjective and end with the identical
word LOVELY, with those two words connected by an identical
ampersand. This significant similarity in the basic format
and structure of the two marks outweighs the difference in
the first words of the two marks.
Comparing the marks in their entireties, we find them
to be similar. The marks can be distinguished when viewed
side-by-side, but as noted above, that is not the test under
the first du Pont factor. Moreover, in cases such as this
one where the parties’ goods are so highly similar, the
degree of similarity between the marks which is required to
support a finding of likelihood of confusion declines. See
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260-
61 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
Cir. 1992). We find under this standard that applicant’s
mark is sufficiently similar to opposer’s mark that
Opposition No. 91185552
13
confusion is likely to result if the marks were to be used
on the highly similar goods involved in this case.
For these reasons, we find that the similarity of the
marks under the first du Pont factor supports a conclusion
that confusion is likely.
Considering and balancing all of the evidence of record
pertaining to the relevant du Pont factors, we conclude that
confusion is likely. We have considered all of applicant’s
arguments to the contrary, but we are not persuaded by them.
To the extent that any doubts might exist as to the
correctness of our conclusion that confusion is likely, we
resolve such doubts against applicant. See Baseball America
Inc. v. Powerplay Sports Ltd., supra, 71 USPQ2d 1844, 1849;
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1663
(TTAB 2002).

Decision: The opposition is sustained.