Louis Vuitton Malletier

Trademark Trial and Appeal Board

Feb 2, 2018

No. 79165769 (T.T.A.B. Feb. 2, 2018)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: December 5, 2017 Mailed: February 2, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Louis Vuitton Malletier
_____

Serial No. 79165769
_____

Rebeccah Gan of Wenderoth LLP
for Louis Vuitton Malletier.
Janice L. McMorrow, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Lykos, Shaw and Lynch,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On February 6, 2015, Louis Vuitton Malletier’s (“Applicant”) predecessor in
interest filed an application to register on the Principal Register the mark APOGÉE
in standard characters for:
Perfumery products; perfumes; toilet water; eaux de parfum; eaux de
Cologne; perfume bases; extracts of flowers; essential oils; air freshening
products; potpourris [fragrances]; incense; cosmetic skin and lip care
products; lotions for cosmetic use; cosmetic hand, face and body care
products; hair care products; toiletries; soaps; shower gels; bath gels;
bath oils; bath salts; foaming bath products; bath beads; cleansing milk
for toilet purposes; deodorants; make-up products; lipstick; mascaras for
eyelashes; blushers; make-up powder; eye shadows; make-up pencils;
make-up removing products, make-up kits; nail care and nail
Serial No. 79165769
- 2 -
appearance improvement products; nail polish, nail protectors, nail
lacquers, in International Class 3.1
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the following registered marks, both owned by KAB Brands, that when
used on or in connection with Applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive:
Registration No. 1144631 for the stylized mark on the Principal Register
ApHOGEE for “Hair Conditioner for Professional Use Only” in
International Class 3;2 and
Registration No. 4866902 for the standard character mark on the
Principal Register APHOGEE for “Hair care lotions; Hair conditioners;
Hair creams; Hair mousse; Hair oils; Hair shampoo; Hair sprays; Hair
styling preparations; Non-medicated hair treatment preparations for
cosmetic purposes; Non-medicated preparations all for the care of skin,
hair and scalp; Hair moisturizers” in International Class 3.3
When the refusal was made final, Applicant appealed and requested
reconsideration which was denied. The appeal was resumed and was fully briefed
based on the original identification of goods. Thereafter, multiple requests for
remand were filed and granted to permit the introduction of new evidence and

1 Application Serial No. 79165769, filed under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1141f (“Madrid Protocol”), requesting extension of protection for International Registration
No. 1248536A. The application was originally filed by Pontet Allano Et Associes Selarl De
Conseils En Propriete Industrielle but during the pendency of this appeal, was assigned to
Louis Vuitton Malletier. See April 20, 2017 Trademark Document and Status Retrieval
(TSDR) database entries. The application contains the following translation statement: “The
English translation of ‘APOGÉE’ in the mark is ‘HEIGHT.’”
2 Registered December 30, 1980; renewed.
3 Registered December 8, 2015.
Serial No. 79165769
- 3 -
amend the identification of goods. Ultimately, Applicant’s identification of goods was
limited to the following:
Perfumery; Perfumery products, namely, oils for perfumes and scents,
perfumes; toilet water; eaux de parfum; eaux de Cologne; all of the
foregoing for non-professional use and sold only within Louis Vuitton
Malletier stores, on Louis Vuitton Malletier’s website and within Louis
Vuitton Malletier’s store-within-store partnerships with high-end retail
stores within Louis Vuitton Malletier’s exclusive distributor network.
The Examining Attorney accepted the amendment but adhered to the refusal to
register. Supplemental briefing then took place focusing on the amended
identification, and the appeal is now ready for decision.
I. Section 2(d) Refusal
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis two key considerations are the
similarities between the marks and the similarities between the goods. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In
addition, other relevant factors in this case are the established, likely-to-continue
channels of trade as well as the purchasing conditions.
We will focus on Registration No. 4866902 because when that registered
standard character mark is considered vis-à-vis the applied-for mark and identified
goods, it is that mark that is most likely to support a finding of likelihood of
Serial No. 79165769
- 4 -
confusion. In other words, if confusion is likely between these marks, there is no need
for us to consider the likelihood of confusion with the other cited registration. See,
e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Marks
We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks,
but instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers
Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). The focus
is on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534
(TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
With these principles in mind, we compare the applied-for mark APOGÉE to the
cited mark APHOGEE. Applicant argues that because ordinary U.S. consumers
familiar with French would translate Applicant’s mark APOGÉE to “height,” it
projects a different meaning and commercial impression than Registrant’s mark
APHOGEE which is a coined term. When translated, Applicant maintains that its
Serial No. 79165769
- 5 -
applied-for mark suggests that its products reflect the “’height’ of continental chic.”4
In the alternative that consumers do not translate Applicant’s mark, Applicant
postulates that by virtue of the presence of an accent mark, consumers are likely to
ascribe a French look and pronunciation to its mark with a hard letter sound “P” and
soft letter sound “G” (A-PO-ZHAY). By contrast, as Applicant asserts, the diagraph
“PH” in the cited mark and absence of the accent mark results not only in a different
appearance and sounds — the hard letters “F” and “G” (A-FO-JEE) — but also
connotation. Applicant points to marketing materials touting Registrant’s hair
products as “pH optimized” and including a “proprietary ProPhytamin complex.”5 In
Applicant’s view, these differences suffice to distinguish the marks.
Despite the visual differences between the marks, overall they are similar. Each
mark is comprised of a single word containing three syllables, commencing with the
letter string “A-P” and ending with the letters “O-G-E-E.” But for the addition of the
accent mark in Applicant’s mark and letter “H” in Registrant’s mark, the marks are
identical. With the cited mark in standard characters, we cannot credit Applicant’s
suggestion that the inclusion of “pH” refers to the abbreviation for the measure of
hydrogen and therefore results in a different meaning and commercial impression
when compared to Applicant’s mark APOGÉE. This is because the letter
combination “PH” can be used in any format, including all upper case, which is not
consistent with the chemical abbreviation. See In re Calphalon Corp., 122 USPQ2d

4 November 7, 2016 Brief, p. 9; 10 TTABVUE 15.
5 Id. at 9; 10 TTABVUE 16. See Applicant’s July 7, 2016 Response to Office Action, TSDR at
2-20.
Serial No. 79165769
- 6 -
1153, 1161 (TTAB 2017) (rejecting Applicant’s argument that some letters of its
standard-character mark would be presented in lowercase, the Board stated,
“[h]aving elected to seek registration of its proposed mark as a standard character
mark,” Applicant’s mark must be “assessed without limitation to any particular
depiction of that term”); see also Citigroup Inc. v. Capital City Bank Group Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011) (“If the registrant … obtains
a standard character mark without claim to any particular font style, size or color,
the registrant is entitled to depictions of the standard character mark regardless of
font style, size, or color … .”). As a result, the marks are only slightly different in
appearance. See, e.g., In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding
TRUCOOL and TURCOOL similar in appearance); In re Pix of Am., Inc., 225 USPQ
691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in
appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding
MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re
BASF AG, 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX
and LUTEXAL insufficient to avoid source confusion).
Moreover, because the cited mark APHOGEE is not a recognized word, it may be
pronounced in a similar manner as the mark APOGÉE. See StonCor Grp., Inc. v.
Specialty Coatings, Inc., 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“There is no
correct pronunciation of a trademark that is not a recognized word.”); see also In re
Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (“[T]here
is no correct pronunciation of a trademark, and consumers may pronounce a mark
Serial No. 79165769
- 7 -
differently than intended by the brand owner.”); In re Belgrade Shoe Co., 411 F.2d
1352, 162 USPQ 227, 227 (CCPA 1969) (“We think that one is very likely to
pronounce ‘Collegienne’ as if it were spelled ‘Colleejen’ or ‘Colleejun.’”). Hence, even
if consumers were to perceive Applicant’s mark APOGÉE as the French word for
“height,” because the marks are so alike in appearance and could be pronounced
similarly, it is likely that consumers would perceive the cited mark as having the
same meaning and commercial impression. See In re Bayer AG, 488 F.3d 960, 82
USPQ2d 1828 (Fed. Cir. 2007) (whether or not ASPIRINA is viewed by the public as
a Spanish term, consumers would have the same perception of the term as the
equivalent of “aspirin”).
Thus, when considered as a whole, both Applicant’s and Registrant’s marks are
similar in appearance, sound, connotation and commercial impression. The first du
Pont factor therefore weighs in favor of finding a likelihood of confusion.
B. The Goods
Next we discuss the second du Pont factor, a comparison of the goods, bearing in
mind that Applicant’s and Registrant’s respective goods must be compared as they
are identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). The respective goods need not be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis, but need only be “related in some manner and/or if the
circumstances surrounding their marketing [be] such that they could give rise to the
Serial No. 79165769
- 8 -
mistaken belief that [the goods] emanate from the same source.” Coach Servs., 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or sold by the same manufacturer or dealer; or copies of prior use-based registrations
of the same mark for both applicant’s goods and the goods listed in the cited
registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave sweetener related where evidence showed both were used
for the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores). Likelihood of confusion must
be found as to the entire class if there is likely to be confusion with respect to any
good that comes within the identification of goods in that class. In re C.H. Hanson
Co., 116 USPQ2d 1351, 1355 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
Applicant’s goods consist of “Perfumery; Perfumery products, namely, oils for
perfumes and scents, perfumes; toilet water; eaux de parfum; eaux de Cologne … for
non-professional use …”; Registrant’s goods are identified as “Hair care lotions; Hair
conditioners; Hair creams; Hair mousse; Hair oils; Hair shampoo; Hair sprays; Hair
styling preparations; Non-medicated hair treatment preparations for cosmetic
purposes; Non-medicated preparations all for the care of skin, hair and scalp; Hair
moisturizers.” Based on the identifications themselves, the involved goods fall under
Serial No. 79165769
- 9 -
the general category of beauty and personal care products. This, standing alone, does
not suffice to show relatedness since there is no per se rule in this regard. However,
the record includes evidence that it is not uncommon for perfumery and hair care
products to be sold under the same trademark:
• Calvin Klein Eternity trademark used in connection with perfume,
eau de toilette, hair/body wash;6
• Salvatore Ferragamo Acqua trademark used in connection with
perfume, eau de toilette, and shampoo/shower gel;7
• Clinique trademark used in connection with hairspray, perfume, body
cream;8
• Jack Black trademark used in connection with perfume and
shampoo;9
• Amazing Grace trademark used in connection with eau de toilette,
shampoo, perfume.10
From this evidence we can glean that Applicant’s and Registrant’s perfumery and
hair products are related, complementary items intended to be used together as part
of one’s beauty care regime. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“[C]omplementary use has long been
recognized as a relevant consideration in determining a likelihood of confusion.”).

6 Excerpts from Macy’s website www.macys.com submitted with March 13, 2017 Final Office
Action March 13, 2017 at TSDR 2-5.
7 Id. at 10-12.
8 Excerpts from Clinique website www.clinique.com submitted with March 13, 2017 Final
Office Action at TSDR 59 and 62.
9 Excerpts from www.getjackblack.com submitted with March 13, 2017 Final Office Action
at TSDR 64-67.
10 Excerpts from www.philosophy.com submitted with March 13, 2017 Final Office Action at
TSDR 74-79, 104, 108.
Serial No. 79165769
- 10 -
This evidence also shows that consumers may not only expect to encounter such
products under the same trademark but may also look for perfumery and hair care
products sharing the same scent. We acknowledge that some of the aforementioned
evidence may involve house marks, but this is no surprise given the nature of the
goods. The evidence still remains probative to the extent that it demonstrates that
the involved goods may emanate from the same source and are designed to be used
together.
Applicant argues that it does not manufacture hair products and that “Registrant
has no nexus to the alchemic ambit of luxury French perfume.”11 In addition,
Applicant contends that Registrant’s products are limited to professional grade
products. Applicant’s arguments are unavailing, as we must rely on the
identifications of goods in the application and registration at issue, not on extrinsic
evidence of actual use. See, e.g., Coach Servs., 101 USPQ2d at 1722; Octocom, 16
USPQ2d at 1787. The fact that Applicant has limited its perfumery products to “non-
professional use” cannot serve as a distinguishing factor; this is because unlike
Registration No. 1144631, the hair care products listed in Registration No. 4866902
are not restricted to “professional use.” As such, we must assume that Registrant’s
goods encompass both professional and non-professional use meaning that they are
available for sale to the general public and not just hair care professionals. Also, as
noted above, it is well established that the involved goods need not be identical. The
issue is not whether the goods will be confused with each other, but rather whether

11 July 21, 2017 Supplemental Brief, p. 4; 32 TTABVUE 9.
Serial No. 79165769
- 11 -
the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). See also, Capri Cosmetics, Inc. v. Nina
Ricci S.A.R.L., 142 USPQ 361 (TTAB 1964) (cosmetics and beauty preparations and
perfumes are closely related goods).
Accordingly, the second du Pont factor also weighs in favor of finding a likelihood
of confusion.
C. Established, likely-to-continue channels of trade
We direct our attention to the established, likely-to-continue channels of trade,
the third du Pont factor. A pivotal issue in this appeal is whether the trade channel
restrictions set forth in the application of “sold only within Louis Vuitton Malletier
stores, on Louis Vuitton Malletier’s website and within Louis Vuitton Malletier’s
store-within-store partnerships with high-end retail stores within Louis Vuitton
Malletier’s exclusive distributor network” obviate any likelihood of confusion.
Applicant contends that these trade channel limitations ensure that “there is simply
no universe in which the average reasonable consumer would conclude that
Applicant’s, premium luxury fragrance goods would emanate from a common source
with Registrant’s specialty, professional-grade hair conditioner.”12
As noted above, the cited registration upon which we rely is not limited to hair
conditioners; nor is it limited to professional use or, for that matter, to any particular
channel of trade. Because the identification in cited Registration No. 4866902 has
no trade channel restrictions, we must presume that Registrant’s hair care products

12 July 21, 2017 Supplemental Brief, p. 2; 32 TTABVUE 7.
Serial No. 79165769
- 12 -
travel in all trade channels appropriate for such goods. See Octocom, 16 USPQ2d at
1787. These trade channels include, as reflected in the record, traditional brick-and-
mortar and online department stores (e.g. Macy’s and Macys.com) as well as direct
business-to-consumer (B2C) websites offering for sale to the general public hair care
products and perfumes (Clinique.com, JackBlack.com, AmazingGrace.com). We
agree with Applicant that Louis Vuitton Malletier stores and the Louis Vuitton
Malletier’s B2C website are specialized trade channels that do not overlap with the
ordinary channels of trade for Registrant’s products. However, we find otherwise
with regard to “Louis Vuitton Malletier’s store-within-store partnerships with high-
end retail stores within Louis Vuitton Malletier’s exclusive distributor network.”
Given that high-end retail stores often sell the types of goods at issue, we consider
this a trade channel appropriate for the goods, and therefore one in which we
presume Registrant’s goods may travel. Indeed, there is no evidence to suggest that
the trade channels are mutually exclusive. We cannot conclude that there would be
no overlapping channels of trade between Applicant’s and Registrant’s goods. See
also Revlon, Inc. v. La Maur, Inc., 157 USPQ 602, 605 (TTAB 1968) (“[A]pplicant’s
hair conditioner and opposer’s perfume, toilet water, talc, etc. are closely related
cosmetic and toiletry products that are, as the record shows, generally sold through
the same outlets to the same classes of purchasers and, moreover, are products which
are found in a line of cosmetics and toiletries marketed by several perfume or
cosmetic houses.”); Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ
406, 407 (TTAB 1973) (perfumes are available to the general public in stores which
Serial No. 79165769
- 13 -
cater to those of expensive tastes and in drug stores which cater to persons of all
tastes). Hence, on the record before us, the third du Pont factor regarding the
similarity or dissimilarity of established, likely to continue trade channels also
favors a finding of likelihood of confusion.
D. Conditions of Sale
Lastly we consider the conditions under which the goods are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. Purchaser sophistication or degree
of care may tend to minimize likelihood of confusion. Conversely, impulse purchases
of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
According to the record, Applicant’s products sold under the APOGÉE mark,
retail for $240 for a 100 ml bottle and $350 for 200 ml sold separately.13 As Applicant
contends, its goods are “high-end, hard to come by and hotly anticipated.”14 By
contrast, Registrant’s products are sold in beauty supply shops for approximately
$11 for a 16 ounce bottle.15 In addition, Applicant maintains that perfume by its very
nature is highly personal, meaning that prospective consumers are likely to exercise
a high degree of care when comparing various perfumes and making purchasing
decisions. Applicant likewise postulates that professional-grade hair products are
not casual purchases either.

13 March 16, 2017 Request for Remand; 24 TTABVUE 28, 42 and 45.
14 July 21, 2017 Supplemental Brief, p. 4; 32 TTABVUE 9.
15 July 7, 2016 Office Action Response at TSDR 20-21
Serial No. 79165769
- 14 -
Both Applicant’s and Registrant’s products are offered for sale to the general
public. In addition, the registration is unrestricted with regard to purchasers or price
point. In other words, both Applicant’s mark and the Registrant’s could be sold to
unsophisticated consumers, suggesting that purchases may be made with no greater
than ordinary care or consideration.
Nonetheless, even if we accept Applicant’s assertion that its involved goods may
be the subject of sophisticated and discriminating purchases, careful purchasers are
likely to be confused by highly similar marks used in connection with related goods.
“[T]hat the relevant class of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between similar trademarks for
similar goods. ‘Human memories even of discriminating purchasers ... are not
infallible.’” In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970)). Therefore, even if purchasers of the
identified goods may exercise care before purchasing these goods, it does not mean
there can be no likelihood of confusion. In the present case, the similarity between
the marks and related nature of the goods as identified outweigh any sophisticated
or careful purchasing decision. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12
USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). As such, this du Pont factor is, at best,
neutral.
Serial No. 79165769
- 15 -
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, each of the du Pont factors discussed above
either favors a finding of likelihood of confusion or is neutral. To summarize, despite
slight differences, the marks overall are similar in appearance and may be
pronounced in an identical or similar manner, meaning that they project virtually
the same connotation and commercial impression. This, coupled with the related and
complementary nature of the goods which are marketed in at least one overlapping
trade channel to the general public leads us to the conclusion that confusion as to
source is likely. On balance, we are not persuaded that because of the price and
personal nature of Applicant’s products that prospective consumers encountering
Applicant’s and Registrant’s marks in the marketplace are unlikely to be confused,
given the similarities of the marks and relatedness of the goods.
Decision: The Section 2(d) refusal to register is affirmed with regard to cited
Registration No. 4866902; accordingly, we need not consider the refusal with regard
to Registration No. 1144631.