Nexxus Products Co.v.Tocco Magico S.P.A.

Trademark Trial and Appeal Board

Jun 18, 1997

OPP (T.T.A.B. Jun. 18, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JUNE 18, 1997
Paper No. 29
EWH/AKP
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Nexxus Products Company
v.
Tocco Magico S.P.A.
_____
Opposition No. 86,022
to application Serial No. 74/123,691
filed on December 11, 1990
_____
John R. Rydell II of Griffith & Thornburgh for Nexxus
Products Company
Lawrence E. Abelman for Tocco Magico S.P.A.
______
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Tocco Magico S.P.A. (applicant) seeks to register
NEXTIME in typed capital letters for: hair shampoos, hair
tonics, hair setting lotions, hair lacquers, hair
conditioners, permanent hair waving preparations. The
intent-to-use application was filed on December 11, 1990.
Opposition No. 86,022
2
Nexxus Products Company (opposer) filed a notice of
opposition alleging that long prior to December 1990,
opposer both used and registered the trademark NEXXUS for
various hair care products, and further alleging that the
contemporaneous use of NEXTIME by applicant and NEXXUS by
opposer is likely to cause confusion. Opposer attached to
its notice of opposition a copy of its Registration No.
1,376,635 for the mark NEXXUS in the form shown below. This
registration issued on December 31, 1985 with a claimed
first use date of December 1979. The goods of this
registration are as follows: "hair shampoo, hair
conditioners, hair sprays, hair dye solutions and
neutralizing preparations for use in permanent hair waving,
skin cleaning preparations, and skin conditioners." In its
notice of opposition, opposer did not claim ownership of any
other marks, nor did opposer claim that it used or
registered its NEXXUS mark on any other products.
Opposition No. 86,022
3
Applicant filed an answer which denied the key
allegations of the notice of opposition. Both parties filed
briefs. Neither party requested a hearing.
The record in this case consists of the depositions
(with exhibits) of Stephen J. Redding (opposer's president)
and Stefano Sarra (applicant's managing director).
Before discussing the merits of this case, one
preliminary matter must be dealt with. During the
deposition of opposer's president, opposer's counsel
attempted to introduce into evidence not only the
aforementioned Registration No. 1,376,635, but also two
additional federal registrations for NEXXUS, as well as one
California state registration for the mark ACCU-TIME.
(Registration Nos. 1,558,098 and 1,551,053; California
trademark Registration No. 77,628). The goods of opposer's
two other federal registrations are various clothing items.
The goods of opposer's California trademark registration are
described as a "permanent wave product." During the
deposition of opposer's president, applicant's counsel
stated that he had "a continuing objection to the
introduction of any other registrations or trademark
applications other than with respect to Registration No.
1,376,635." (Redding deposition page 12). In addition,
applicant's counsel objected to opposer's reliance on any
trademarks which opposer did not plead in its notice of
opposition. (Redding deposition pages 7 and 8). Moreover,
in footnote 1 of its brief, applicant requested that all
Opposition No. 86,022
4
references to Registration Nos. 1,558,098 and 1,551,053 for
NEXXUS for clothing as well as California state Registration
No. 77,628 for ACCU-TIME for a permanent wave "product
should be stricken from the record."
We find applicant's request to be well taken. At no
time did opposer move to amend its notice of opposition to
claim ownership of additional marks or to claim that it used
or registered NEXXUS for products other than those set forth
in opposer's pleaded Registration No. 1,376,635. As a
practical matter, our ruling is of little consequence
because in its brief, opposer has never discussed its other
marks, nor has opposer discussed its use or registration of
NEXXUS on clothing products or on any other products besides
those set forth in Registration No. 1,376,635.
As the parties agree, there is only one issue in this
case, namely, whether the use of NEXTIME by applicant for
hair care products and of NEXXUS by opposer for hair care
products is likely to result in confusion. (Opposer's brief
page 4; applicant's brief page 3). By making of record its
Registration No. 1,376,635, opposer has established its
priority.
In any likelihood of confusion analysis, two key
considerations are the similarity of the goods and the
similarity 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
Opposition No. 86,022
5
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.")
In this case, the goods of the application and
opposer's Registration No. 1,376,635 are, in part, either
identical (hair shampoos and hair conditioners) or very
closely related.
Turning to a consideration of the marks, we note at the
outset that "when marks would appear on virtually identical
goods or services [as is the case here], the degree of
similarity [of the marks] necessary to support a conclusion
of likely confusion declines." Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). However, having said the foregoing,
we find that the marks are dissimilar enough such that their
use on identical, relatively inexpensive consumer products
is not likely to result in confusion.
Marks are usually compared in terms of three factors:
(1) visual appearance/sight; (2) pronunciation/sound; (3)
meaning/connotation. See 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 23:21 at page 23-
47 (4th ed. 1996).
In terms of visual appearance, while both marks begin
with the letters NEX, they are otherwise quite dissimilar.
This is particularly true when one compares applicant's mark
NEXTIME with the manner in which the opposer has registered
and almost always uses NEXXUS for hair care products,
namely, with one X stacked on top of another X. As
Opposition No. 86,022
6
opposer's president testified, he prefers that opposer's
NEXXUS mark be depicted with "stacked" double Xs. (Redding
deposition page 21). In addition, while applicant filed in
1990 an intent-to-use application, applicant in actuality
has made continuous use of its mark NEXTIME in the United
States since 1991. Reproduced below is the packaging for
applicant's product as it is sold in the United States. (Of
course, applicant should not have utilized the letter "R"
within a circle next to its mark NEXTIME.).

Opposition No. 86,022
7
As can be seen from above, applicant's mark is visually
quite distinct from opposer's mark, especially when one
considers opposer's mark as it is registered and as it is
typically used (see below).
Comparing the two marks in terms of pronunciation, we
believe that applicant's mark, while it is depicted as one
word with one T, would nevertheless be pronounced as "next
time." In terms of pronunciation, applicant's mark NEXTIME
and opposer's mark NEXXUS are once again dissimilar.
Finally, in terms of meaning or connotation,
applicant's mark NEXTIME has the meaning of the very common
expression "next time." On the other hand, opposer's mark
NEXXUS would, according to opposer's president, be perceived
either as opposer's trademark (i.e. as an arbitrary term),
or as the word "nexus" meaning "coming together or joining
together ... a connection ... a link." (Redding deposition
page 18). Obviously, the meanings of the words "next time"
and "nexus" are distinctly different, and in no way can the
Opposition No. 86,022
8
two words be used interchangeably. (Redding deposition page
21).
In summary, given the dissimilarities in applicant's
mark and opposer's mark, we find that the contemporaneous of
these two marks on identical goods is not likely to result
in confusion.
One final comment is in order. While opposer never
contended that its NEXXUS mark is famous, opposer did argue
that its mark is "well known." (Opposer's brief page 5).
However, opposer has provided no evidence as to the extent
of sales of its NEXXUS products in terms of either dollar
amounts or unit amounts. While opposer has demonstrated
that "in 1991-1992, alone, TV advertisement expenditures by
[opposer for its NEXXUS hair care products] amounted to
approximately $10 million," we find that the advertising
expenditures are simply not great enough to have caused
opposer's NEXXUS trademark to achieve the status of a famous
mark. (Opposer's brief page 5).
Decision: The opposition is dismissed.
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Opposition No. 86,022
9
Administrative Trademark
Judges, Trademark Trial
and Appeal Board