Parfums de Coeur, Ltd.v.Lory Lazarus

Trademark Trial and Appeal Board

Feb 27, 2007

No. 91161331 (T.T.A.B. Feb. 27, 2007)

Mailed:
February 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Parfums de Coeur, Ltd.

v.

Lory Lazarus
_____

Opposition No. 91161331
to application Serial No. 76522317
filed on June 4, 2003
_____

Marcia B. Paul and Teena H. Lee of Davis Wright Tremaine LLP
for Parfums de Coeur, Ltd.

James I. Charne of Law Offices of James Charne for Lory
Lazarus.
______

Before Seeherman, Drost and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Parfums de Coeur, Ltd. has opposed the application of
Lory Lazarus to register BM BODYMAN and design,1 as shown
below,

1 The mark was characterized as “BM BODYMAN and design” by the
USPTO when it entered the data for the application. We note that
applicant described his mark as “BODYMAN and design,” and that
the parties have used both terms in their briefs. We will
THIS DISPOSITION IS A
PRECEDENT OF THE TTAB
Opposition No. 91161331
2

for “entertainment services in the nature of an animated
television series.”2
Opposer has brought this opposition on the ground of
likelihood of confusion, alleging it is one of the largest
manufacturers of popularly-priced women’s and men’s
fragrances; that in February 2000 opposer introduced its BOD
MAN line of fragrance products for men; that opposer owns
registrations for BOD MAN and for BOD for men’s fragrances;
that a significant feature of opposer’s print and television
advertising for its BOD MAN products is the “Bod Man,” “a
cartoonish and exaggerated rendering of a very strong and
fit man with prominent muscles” (¶ 7) and that this figure
also appears on displays and product packaging; that
applicant’s applied-for mark BM BODYMAN and design is
confusingly similar to opposer’s BOD MAN mark, and that

continue to use the Office’s characterization of the mark in our
decision, but we recognize that the letters BM are depicted as
part of the design element.
Opposition No. 91161331
3
opposer’s products and applicant’s television series are
targeted to similar audiences, namely younger men.
In his answer, applicant admitted the allegations of
opposer’s paragraphs 4 and 5, namely, that opposer obtained
federal registrations for the marks BOD MAN and BOD; and
that opposer notified applicant by letter dated April 30,
2004 of its trademark registration to the BOD and BOD MAN
marks and demanded that applicant abandon his application.
Applicant otherwise denied the salient allegations in the
notice of opposition. Applicant also asserted what he
described as “defenses,” but which are elaborations of his
reasons why confusion is not likely.
The record consists of the pleadings; the file of the
opposed application, and the testimony depositions, with
exhibits, of Mark Laracy, opposer’s president, and of
applicant Lory Lazarus, both of which were taken by opposer.
Opposer has submitted, under notice of reliance, status and
title copies of its registrations for BOD MAN (“MAN”
disclaimed)3 and BOD,4 both for “men’s fragrances, namely,

2 Application Serial No. 76522317, filed June 4, 2003, based on
Section 1(b) of the Trademark Act (intent-to-use).
3 Registration No. 2,571,581 issued May 21, 2002.
4 Registration No. 2,398,731 issued October 24, 2000, Section 8
& 15 affidavits accepted and acknowledged. The status and title
copy was furnished by the USPTO on June 2, 2005, during opposer’s
testimony period and prior to the filing of the Section 8 and 15
affidavits. In accordance with Board policy, we have confirmed
that Office records reflect the filing of these affidavits. See
TBMP §704.03(b)(1)(A) (2d ed. rev. 2004) and cases cited at
footnote 142.

Opposition No. 91161331
4
cologne, eau de toilette, aftershave, scented body sprays
and personal deodorants”; applicant’s responses to certain
of opposer’s interrogatories; and portions of the discovery
deposition of applicant.5 Applicant has submitted, under
notice of reliance, opposer’s responses to certain of
applicant’s interrogatories, and portions of his discovery
deposition, with exhibits, submitted with opposer’s
consent.6
The case has been fully briefed.
As a preliminary matter, we note that, although
throughout its notice of opposition opposer asserts
likelihood of confusion solely with respect to the mark BOD
MAN, in its brief it included the mark BOD in its discussion
of the issue of likelihood of confusion. However, opposer
pleaded ownership of the mark BOD in its notice of
opposition, made a copy of this registration of record,
elicited testimony from opposer’s president about this mark
during his testimony deposition, and applicant’s attorney
cross-examined the witness with respect to the use of BOD.
Moreover, applicant discussed opposer’s mark BOD in his
brief on the case. In view thereof, we treat the pleadings

5 Opposer also submitted, under notice of reliance, the file of
applicant’s application. However, this document is automatically
of record pursuant to Trademark Rule 2.122(b).
6 Applicant’s motion to submit the discovery deposition
indicates that it is with the consent of opposer, and in its
brief opposer specifically listed applicant’s submission of the
Opposition No. 91161331
5
as amended pursuant to F.R.C.P. 15(b) to include a claim of
likelihood of confusion with respect to opposer’s mark BOD.
The record shows that opposer sells fragrances for
women and men. Its first line was a series of designer
imposter women’s fragrances, which were advertised as
smelling like famous designer brands, but were sold at a
much lower price point. In January 2000 opposer introduced
a men’s line of fragrances under the marks BOD/BOD MAN. In
the packaging the word BOD appears in very large letters,
with MAN in smaller letters below and somewhat to the right
of BOD. Thus, the same display on the packaging supports
the use of both marks. The BOD/BOD MAN line began with
fragrance body sprays, and when it was first launched its
target customer was young men, ages 9-24. This demographic
(or ages 12-25) remains its primary customer, although the
product may be bought by men in their thirties or even
older. It is a mass brand, which is affordably priced and
is sold in mass merchandisers and drug stores. Wal-Mart is
opposer’s largest account, and in 2004 represented half of
opposer’s sales. The BOD/BOD MAN fragrance products are
currently sold in 18,000-20,000 outlets, including
international accounts. Opposer’s total sales of the
BOD/BOD MAN products was less than $8.6 million in 2001,

discovery deposition as constituting part of the record.
Appendix to opposer’s main brief, Item 7.
Opposition No. 91161331
6
less than $9.7 million in 2002, almost $12 million in 2003
and less than $17 million in 2004.7
Opposer advertises primarily through television and
movie theaters, but also advertises in periodicals such as
Marvel Comics “The Incredible Hulk,” “GameInformer,”
“Smackdown” and “Smooth.” From the launch in 2000 through
2004 opposer has spent over $23 million advertising its
BOD/BOD MAN products.8 Opposer’s president testified to its
advertising plans for 2005 (his testimony was taken in
October 2005), and he provided a schedule showing the
television channels, programs and/or times the commercials
were to run. This schedule shows that commercials were
planned for a large number of channels and programs,
including South Park and Late Night on the Comedy channel,
various time periods on MTV, and Adult Swim on the Cartoon
channel.
In addition to the body fragrance products, opposer
introduced a room freshener called FUNK FIGHTER under the

7 Opposer submitted records of its actual sales from 2000
through 2004, but marked them as confidential (Exhibit 11).
However, opposer’s president testified to some of its annual
sales in testimony that was not filed under seal. In this
opinion we have used the figures from the testimony that is of
public record, but we note that the testimony does not take into
account returned merchandise. Therefore, we have used the phrase
“less than” to indicate that the net amount is somewhat lower
than the numbers in the testimony.
8 The exhibit showing the actual advertising figures (Exhibit
7), was marked as confidential. However, opposer’s president, in
non-confidential testimony, provided some advertising figures,
and this is what we have quoted in our opinion.

Opposition No. 91161331
7
BOD MAN line. Opposer has not licensed its BOD/BOD MAN
marks, but shortly before the testimony deposition of its
president in October 2005, it was approached to license the
BOD MAN mark for underwear, and declined that suggestion.
Applicant, Lory Lazarus, is an individual who, inter
alia, is a writer, composer and performer. He conceived the
idea of a character called Bodyman in 1992 or 1993, and
envisioned Bodyman as a superhero having only a torso. He
developed the Bodyman character more fully in 1999, and in
October 2003 Mr. Lazarus completed a treatment for an
animated television series. In late 2003 he contacted an
individual at Phase Four Productions, which produces
television shows, about his program. Although she showed
interest, she said that Mr. Lazarus should shop his program
around to the networks, and if anyone was interested she
would take over at that point. Mr. Lazarus met with Cartoon
Network in July 2004 about his proposal, specifically to
have them consider his series for their Adult Swim
programming, which is “a late night block of wacky, quirky,
offbeat, sometimes adult-oriented animated TV shows,” but
they turned it down. Lazarus disc. dep., p. 60.
The Bodyman character is a superhero who is only a
torso, with no arms, legs or head. He sees with his
nipples, which are drawn as eyes; he speaks through his
navel; and he captures criminals by projecting his
Opposition No. 91161331
8
intestines, which can act as a rope or as a lasso. This
character has an alter ego, an ordinary person who is also a
torso, but is dressed in a shirt and tie, and has a pair of
glasses resting on his collar.
The target audience for the television show is aged 18
to 34 or 40, and is both male and female.
In view of the submission of copies of its pleaded
registrations, as well as the testimony regarding opposer’s
use of the marks BOD MAN and BOD, opposer has established
its standing. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000). Further, because
opposer’s registrations are of record, priority is not in
issue. King Candy Company v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In any event,
opposer has demonstrated prior use of its marks for
fragrance products, such use having commenced in early 2000.
Although applicant testified that he thought up the
character Bodyman, and created drawings of the character in
the 1990s, he made no overtures to people in the television
industry with respect to his proposed series until 2003, and
he has not as yet prepared an actual television show, let
alone had such a show produced or shown on television.
This brings us to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all of the probative facts in evidence that are relevant to
Opposition No. 91161331
9
the factors set forth in 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
We turn first to a consideration of the marks.
Opposer’s marks are BOD MAN and BOD; applicant’s mark is
BODYMAN with a design of a torso wearing a cape bearing the
initials BM. Opposer takes the position that BODYMAN is the
dominant part of applicant’s mark, and therefore that only
the word BODYMAN should be compared with opposer’s word
marks. “If the dominant part of the composite mark is the
word,… then the parties’ word marks must be compared aside
from the design.” Brief, p. 12. This is not a correct
statement of the law. Even if an element of a mark is
dominant, this does not mean that other elements may simply
be ignored in the likelihood of confusion analysis.
Although it is permissible to give greater weight to a
dominant element, marks must still be compared in their
Opposition No. 91161331
10
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).9
Nor do we agree with opposer’s position that the word
BODYMAN is the dominant element of applicant’s mark. As
depicted in the drawing, the design is prominently
displayed, being the largest element in the mark, and at the
top of the mark. Further, the design is of a grotesque
image—a torso that acts as a face, with the nipples being
eyes and the navel acting as a mouth. As a result, the
design is very noticeable and has the effect of catching the
eye and engaging the viewer before the viewer looks at the
word BODYMAN. Because of the strong visual impact of the
design element, which also includes a cape with the initials
BM, reminiscent of a super hero costume, we find that in
appearance applicant’s mark BM BODYMAN and design differs
from opposer’s marks BOD and BOD MAN. We also point out
that there are differences between the word BODYMAN and the
word BOD and, although not as great, there are also
differences between BODYMAN and BOD MAN.
Opposer points out that when customers refer to
applicant’s mark, the design element will not be

9 Opposer appears to recognize this principle in another portion
of its brief, where it has cited cases for the propositions that
a disclaimer does not remove a disclaimed word from consideration
in the confusion analysis, and that although a component of a
composite mark is disclaimed, the mark must be viewed in its
entirety. Opposer’s brief, pp. 14-15.

Opposition No. 91161331
11
articulated, and therefore the relevant comparison is
between BODYMAN and BOD MAN/BOD. We agree that the
similarities in sound between BODYMAN and BOD MAN are much
stronger than the similarities in appearance,10 although we
point out that BODYMAN has three syllables, and the phonetic
difference between BODYMAN and BOD MAN will be heard because
this difference creates the extra syllable. If the
difference in pronunciation were the only differences
between the marks, there would obviously be a much stronger
case for the similarity of the marks. However, it must be
remembered that applicant’s mark includes a prominent design
element, and it is intended to be used for an animated
television series. Because television is a visual medium,
the “consumers” of applicant’s show, i.e., the viewers, will
see the mark, and see the prominent design element. Even if
they recommend the program to others by word of mouth, it
will be a recommendation for a television program, not for a
fragrance product. As for those consumers who have no
familiarity with applicant’s mark other than hearing it
referred to as the name of an animated television series, if
they encounter opposer’s fragrance products sold under the
mark BOD or BOD MAN, because of the differences between
men’s fragrances and an animated cartoon series, as

10 Clearly there are additional phonetic differences between
BODYMAN and BOD per se.

Opposition No. 91161331
12
discussed below, they would have no basis to associate the
fragrance products with the television series. Therefore,
the similarity in the sound of the marks is not a
dispositive factor when the marks are compared in their
entireties. Compare, Centraz Industries Inc. v. Spartan
Chemical Co., 77 USPQ2d 1698 (TTAB 2006), in which
likelihood of confusion was found between ISHINE in stylized
form and ICE SHINE, both for legally identical floor
cleaning products. The present case, however, presents a
situation similar to that in Steve's Ice Cream v. Steve's
Famous Hot Dogs, 3 USPQ2d 1477, 1478-79 (TTAB 1987). The
Board found no likelihood of confusion between STEVE’S for
ice cream and STEVE’S and design for restaurant services.
The Board pointed to:
obvious differences in the marks here.
The design portion of applicant's mark
is extremely suggestive of the fact that
applicant's restaurants feature hot
dogs. The highly stylized depiction of
humanized frankfurters, prancing arm in
arm to musical notes, creates a
distinctive commercial impression. Even
with the word “STEVE'S” appearing above
the hot dog figures, applicant's mark is
distinguishable from the registered mark
of opposer, which is simply the word
“STEVE'S” in block letter form.

Moreover, there are also differences in the
connotations of the marks. As used in applicant’s mark,
BODYMAN clearly refers to the “person” depicted in the
design element, a cape-wearing superhero who is merely a
Opposition No. 91161331
13
torso or “body.” Opposer itself has acknowledged that the
design portion “reinforc[es] the connotation created by the
words of the mark.” Brief, p. 13. Opposer’s marks, on the
other hand, are for BOD and BOD MAN. Although BOD has the
connotation of “body,” it means something more than simply
“the entire material structure and substance of an organism,
especially of a human being or an animal.”11 Rather, it is
an informal or slang term that refers to a great physical
specimen, a person with an excellent physique and/or one
that is sexy.12 It is this same connotation of BOD that
applies to opposer’s mark BOD MAN, in which MAN has been
disclaimed, presumably because it is descriptive of goods
for men. This connotation of BOD in BOD MAN is also
conveyed in opposer’s packaging, in which the word BOD
appears in much larger letters, while MAN is shown under
BOD, and off to the side, and as well as in opposer’s

11 The American Heritage Dictionary of the English Language, ©
1970. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
12 We take judicial notice of the following dictionary definitions
of "bod": n. Informal body: You’ve got to have a great bod to
look good in that bathing suit.” The Random House Dictionary of
the English Language, 2d ed. unabridged © 1987; n. informal a
physique: Roger was proud of his bod. The New Oxford American
Dictionary, 2d ed.© 2005; n. a body, especially a nice body. You
got a nice bod, Tom. Comtemporary American Slang, 2d ed. © 2001.
It appears that it was because BOD has this slang connotation
that opposer’s marks were accepted for registration, since if BOD
meant only “body” or the structure of a human being, it would
have been merely descriptive of body sprays, one of the goods
listed in the registrations..
Opposition No. 91161331
14
advertising, which features a drawing of a man with a “hunk”
physique, and women saying “I want your BOD.”
Accordingly, although we recognize that BOD means BODY,
as used in the marks BM BODYMAN and design and BOD MAN/BOD,
the term, and the marks as a whole, have different
connotations. See In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984) (no likelihood of confusion found between
PLAYERS in stylized form for men’s underwear and PLAYERS for
shoes, based in part on the different connotations the marks
have when used in connection with the respective goods).
See also In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB
1977) (no likelihood of confusion found between BOTTOMS UP
for ladies’ and children’s underwear and BOTTOMS UP for
men’s suits, coats and trousers).
Because of these differences in appearance and
connotation, the commercial impressions of the marks differ
as well. Applicant’s mark conveys the impression of a
grotesque superhero called BODYMAN because he consists of
only a torso, while opposer’s mark BOD conveys the
impression of a great physique, and BOD MAN conveys the
impression either of a men’s product that causes one to be a
great-looking or desirable man or, due to the subordinate
element MAN, of a men’s product called BOD. Opposer argues
that the connotations and commercial impressions are similar
because the design element in applicant’s mark is a “nude
Opposition No. 91161331
15
muscular torso” and this is “the same distinctive body type
as the ‘superstuds’ used to market the BOD MAN products.”
Reply brief, p. 2. However, while opposer’s advertisements
do indeed depict a male figure with an exaggerated “ripped”
physique, this figure of a good-looking desirable man is far
different from the grotesque, albeit muscular, torso that is
so prominently displayed in applicant’s mark. Thus, we are
not persuaded by opposer’s argument and maintain our view
that the marks differ in connotation and commercial
impression.
Accordingly, when we compare the marks in their
entireties, and although recognizing the aural similarities
between BODYMAN and BOD MAN, we find that overall the marks
are different, and that the factor of the similarity of the
marks favors applicant.
The next du Pont factor we consider is the similarity
of the goods and services. As opposer has pointed out, it
is not necessary that the goods and services of the parties
be similar or competitive, or even that they move in the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
Opposition No. 91161331
16
the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
Clearly, opposer’s men’s fragrance products and
applicant’s animated television series are not similar or
competitive or overlapping goods and services. However,
opposer argues that they are related because the titles of
television programs are used as trademarks for merchandising
products. In support of this position, opposer has cited,
inter alia, Turner Entertainment Co. v. Nelson, 38 USPQ2d
1942 (TTAB 1996),13 in which the Board found likelihood of
confusion between GILLIGAN'S ISLAND for “suntan oil, suntan
lotion, sunblock, sunless tanning lotion, after sun
moisturizing lotion, lip balm, hand and body lotion, hair
shampoo and body bar soap and GILLIGAN’S ISLAND for
entertainment services in the nature of a television
series.14 The Board stated in that case that “[i]t is

13 The cases cited by opposer in support of its position that
television program marks and retail products are related are,
with the exception of Turner, cases that were brought in state or
federal courts and involve different issues and fact situations.
Because of this, we have concentrated on the Turner case in our
discussion herein.
14 Opposer quotes the Board as noting in that decision that “it
has become customary in both the television and motion picture
film industry for the owners of works such as television series
and feature films to use, or license the use of, the names of
these properties and the names and likenesses of the characters
therein for merchandising on other goods and services.” Brief,
p. 17. In point of fact, although this quote appears in the
opinion, it is reported by the Board as a statement made in the
Opposition No. 91161331
17
common knowledge and, in the present case, undisputed that
video games, t-shirts, beach towels, caps and other logo-
imprinted products are used as promotional items for a
diverse range of goods and services, not to mention for
specific television shows and movies.” Id. at 1944.
Although opposer recognizes that, in these cases, it was the
owner of the television series that was the plaintiff and
who claimed that another’s later use of the mark on products
was likely to cause confusion, opposer asserts that it is
irrelevant that in the present case the mark was first used
on fragrance products, with applicant later using the mark
for a television series, and that the principle of the
relatedness of television entertainment services and
products still obtains. In support of this position,
opposer points to Seligman & Latz, Inc. v. Merit Mercantile
Corp., 222 USPQ 720 (TTAB 1984), in which the defendant’s
mark ARPEL for clothing was found likely to cause confusion
with ADRIEN ARPEL for beauty products; opposer states that
in that case “the Board found irrelevant the fact that
typically a mark is first used on clothing and then expanded
into beauty products.” Brief, p. 18.
It would appear to be opposer’s position that once
television services and goods have been found to be related

declaration of one of the witnesses, rather than a finding by the
Board.

Opposition No. 91161331
18
in one case, they must be deemed related in all cases, no
matter what the circumstances of the particular case.
However, as has been frequently stated, each trademark case
must be decided on its own merits. While we may look to
other cases for guidance, these cases do not present hard
and fast rules as to when confusion is likely and when it is
not. Thus, there is no general rule that television
programs and products are related goods and services despite
the fact that likelihood of confusion has been found in some
cases involving marks used for a television series and for
goods. It is still opposer’s burden to show that its goods
are related to the applicant’s services.
In Turner, the Board relied heavily on the fame of the
opposer’s mark and opposer’s licensing of that mark for
various products in finding likelihood of confusion between
GILLIGAN’S ISLAND for suntan lotion and other sun tanning
products and GILLIGAN’S ISLAND for a television series:
“As is clear from the evidence, opposer's GILLIGAN'S ISLAND
television series is well known. Further, as a result of
this notoriety, the mark has been the subject of licenses.”
Turner Entertainment Co. v. Nelson, supra at 1944.
This common trade practice [the
licensing of commercial trademarks for
use on “collateral” products] is
reflected in the record before us, which
shows that opposer has actively licensed
its GILLIGAN'S ISLAND mark as a result
of the popularity of the long-running
syndication of the television series
Opposition No. 91161331
19
under the same mark. According to the
undisputed evidence, opposer has
licensed its mark for use on a wide
variety of collateral products,
including clothing items, beach towels,
beach bags, can coolers, pinball
machines, video games, mugs and
umbrellas. All of these uses promote
the GILLIGAN'S ISLAND television series.

Id. The marks in that case were also identical. In
addition, the Board noted that its conclusion that confusion
was likely was also supported by the fact that the applicant
was attempting to register the mark for sun tanning
products, and there was an obvious association between such
goods and a television series based on the theme of
castaways on a tropical island in the Pacific.
There are clear factual differences between the Turner
case and the present situation. The first is obviously that
here opposer uses its marks for products, and it is
applicant, as the later user, that seeks to register his
mark for a television series. Although opposer asserts that
it is irrelevant that the product entered the marketplace
prior to the entertainment services in terms of whether the
goods and services are related, we think that this factual
difference is significant. Although in certain
circumstances consumers might expect a mark for a television
series to be used on collateral products, they are not
likely to assume that a mark that is used for men’s
fragrances has been expanded to identify a television
Opposition No. 91161331
20
series. Certainly there is no evidence in the record to
support such a conclusion. As noted above, opposer takes
the position that it can rely on those cases in which
confusion was found between marks used on television
entertainment services and products, even though in those
cases the plaintiff was the owner of the television series
and was claiming that another’s later use of the mark on
products was likely to cause confusion. Opposer cites
Seligman & Latz, Inc. v. Merit Mercantile Corp., supra, for
the proposition that the order of entry into the market is
irrelevant, and that if there is a likelihood of confusion
between marks used on television entertainment services and
products, it does not matter whether the first user of the
mark uses it for television entertainment services (which
is the situation in all the cases in which confusion was
found to be likely) or uses it for a product.
Seligman involved a defendant who was attempting to
register ARPEL for clothing, despite the plaintiff’s use and
registration of the designer name ADRIAN ARPEL for cosmetics
and beauty services. The defendant in that case had tried
to discount testimony about the use of designer names for
both clothing and cosmetics by pointing out that “almost all
of these individuals were initially known as clothing or
accessory designers and … their names as marks were used
Opposition No. 91161331
21
first in the clothing and not in the cosmetic or beauty care
field.” The Board did not accept this argument:
That is to say, purchasers acquainted
with the fact that companies are selling
items of clothing and cosmetic or
toiletry products under the same
designer's name are not likely to engage
in the kind of reasoning applicant
advances but are rather most likely to
believe, because of the close
relationship and association of names in
these related fields, that applicant's
clothing items and opposer's cosmetic
and beauty care products and services
have the same source, or at least are
produced under license from the
designer.

Id. at 723. The Board’s comments were made in response to
the defendant’s attack on the plaintiff’s evidence showing
that, where designer marks are concerned, clothing and
cosmetics are related goods. The Board found that designers
used their marks for both clothing and cosmetics, and the
public would view these goods as related when designer marks
were used on them, even though the plaintiff used its mark
on cosmetics, rather than following the general pattern of
first using its mark on clothing and then expanding into
cosmetics. We do not regard this case as standing for a
general proposition that the time of entry into the market
is irrelevant; while it might have been irrelevant whether
plaintiff first used its mark on cosmetics rather than
clothing, the key fact was that plaintiff had a designer
name mark, and because designer name marks are used on
Opposition No. 91161331
22
cosmetics and clothing, the goods were related in terms of
the likelihood of confusion analysis. There is certainly
nothing in the opinion to indicate that if goods were found
to be related in one case, they must be considered related
in all cases or, extrapolating to the present situation,
that it would make no difference to the analysis if it were
the defendant who had the television series mark rather than
the plaintiff.
Nor has opposer established a case of reverse
confusion, in which people familiar with applicant’s
television series (should it ever be produced) would be
likely to associate the mark for that series with a men’s
fragrance. As opposed to the cases involving television
program marks cited by opposer, here there is no evidence
that applicant’s mark has been used, much less that it is
famous. Fame, of course, was a major factor in the Turner
case, the Board noting at several points in its rather brief
decision the notoriety of the opposer’s GILLIGAN’S ISLAND
mark: “nor does applicant dispute the extensive use and the
resultant notoriety of opposer's GILLIGAN'S ISLAND mark”;
“opposer's GILLIGAN'S ISLAND television series is well
known”; “as a result of this notoriety”; “well-known
GILLIGAN'S ISLAND mark of opposer.” Turner Entertainment
Co. v. Nelson, supra at 1944. Nor has opposer shown that
men’s fragrances are the type of product for which
Opposition No. 91161331
23
applicant’s mark would be used as a merchandising mark.
There is no evidence in the record that marks for
entertainment services are typically licensed for use on
fragrance products. See Blue Man Productions Inc. v.
Tarmann, 75 USPQ2d 1811 (TTAB 2005) (entertainment services
and cigarettes found not to be related, opposer failed to
show that cigarettes or tobacco are products for which
owners of merchandising marks would license their marks).
Turner lists a number of items that can be the subject of
collateral merchandising, e.g., caps, t-shirts, beach
towels, linens and glassware, but fragrance products are not
among them. Certainly there is nothing in the record to
suggest a connection between a superhero consisting of a
torso and men’s fragrances, such that consumers would be
likely to assume a connection between a television series
about such a character and men’s fragrance products.
Moreover, merchandising marks are normally identical to
the primary mark, since it is because of the primary mark
that consumers wish to purchase the licensed products. In
Turner, as previously noted, the marks were identical, and
the Board specifically found that “opposer has actively
licensed its GILLIGAN'S ISLAND mark as a result of the
popularity of the long-running syndication of the television
series under the same mark.” Turner Entertainment Co. v.
Nelson, supra at 1944 (emphasis added). As discussed above,
Opposition No. 91161331
24
applicant’s mark and opposer’s marks differ significantly
because of the prominent torso design in applicant’s mark,
and even the words themselves--BODYMAN vs. BOD and BOD MAN--
are different. Because this design element, which includes
the letters BM, is not part of the mark on opposer’s
fragrance products, consumers would not be likely to view
the products as merchandised products related to applicant’s
television series.15
Accordingly, the factor of the relatedness of the goods
and services favors applicant.
The third du Pont factor is the similarity or
dissimilarity of the channels of trade. Opposer’s goods are
fragrance products that are sold in mass market retailers
such as Wal-Mart and Kmart and in drugstores. Further,
because the identification in opposer’s registrations does
not limit the goods to any specific channels of trade, we
must deem the goods to be sold in all channels appropriate
for men’s fragrances, which would include, for example,
department stores and cosmetic and beauty supply stores.

15 Opposer also relies on Dallas Cowboys Cheerleaders, Inc. v.
Pussycat Cinema, Ltd, 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979)
for the principle that consumers need not believe that the owner
of the mark actually produced the infringing goods, but only that
the owner sponsored or otherwise approved the use of the
trademark. We have no quarrel with this principle. However, as
opposed to the Dallas Cowboys case, which involved the use of a
virtually identical uniform (the trademark), here, for reasons
discussed supra, we find that the marks are different, such that
consumers are not likely to believe that there is an association
or sponsorship between opposer’s goods and applicant’s services.

Opposition No. 91161331
25
Applicant’s services, on the other hand, are a television
series. These channels of trade are clearly different.
Opposer argues, however, that its products and applicant’s
services target the same category of people and would be
marketed primarily through the same means--national
television advertising. Opposer asserts that its products
are heavily promoted through television commercials on the
same channels that would be likely to broadcast and run
promotions for applicant’s BODYMAN television show. In this
connection, opposer notes that its commercials have run on
the Cartoon Network and Comedy Central channels, and
applicant has tried to sell his series to those channels.
The mere fact that opposer may advertise its products
on the same cable television channels on which applicant’s
television program, or promotions for his television
program, is shown, is not enough in this case to demonstrate
that the factor of the channels of trade favors opposer.16
Because virtually everything can be advertised and/or
promoted through television, the common use of television
for such advertising is not a sufficient basis to say that

16 The record shows that some of opposer’s commercials have run
during the Cartoon Network’s “Adult Swim” programming, and
applicant had pitched his show to the executives for Adult Swim,
an offer which Adult Swim declined. To the extent opposer
suggests that it might have been possible, had applicant’s show
been accepted, for opposer’s commercials to run during the
cablecast of applicant’s show, or in close proximity thereto, we
think that confusion would still be unlikely because of the
differences in the marks.

Opposition No. 91161331
26
goods and services are sold through the same channels of
trade. Even if we accept that commercials for opposer’s
products may appear on the same channels that viewers of
applicant’s series may watch, so that these viewers could be
exposed to both opposer’s products through the commercials
and applicant’s programs and/or ads for the programs, these
viewers would know about the BODYMAN character that is the
subject of the television series, including the connotation
of the word BODYMAN in the mark. They would also be
familiar with the visual appearance of the mark, which
includes the design element. We see no basis for them to
make a connection between this mark, used for an animated
television series about a superhero that is a torso, with
opposer’s marks BOD and BOD MAN for men’s fragrances even if
they encountered commercials for opposer’s products while
watching television.
We also note opposer’s point that it promotes and sells
its products through the Internet, and that applicant’s
television series might be promoted through the Internet,
such as through a website for a cable channel on which the
television series would appear. Even if we accept that
opposer’s products and applicant’s television series could
be promoted through the Internet, the mere fact that goods
and services may both be advertised and offered through the
Internet is not a sufficient basis to find that they are
Opposition No. 91161331
27
sold through the same channels of trade. The Internet is
such a pervasive medium that virtually everything is
advertised and sold through the Internet. We therefore need
something more than this general fact in order to show that
“the conditions and activities surrounding the marketing of
the goods [and services] are such that they would or could
be encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer.” In re International Telephone & Telegraph Corp.,
supra at 911. For example, if the goods and services were
promoted or offered through the same website, that might
constitute a circumstance that could lead to likelihood of
confusion. However, merely because the medium of the
Internet is involved is not a sufficient basis to show that
the conditions and activities surrounding the marketing of
the goods and services are such as to lead to confusion.17

17 Opposer also suggests that merchandise related to applicant’s
television series might be offered through a website for a cable
channel that “broadcasts” applicant’s television series. This,
of course, is rank speculation. And, in point of fact, there is
actually no evidence of record to establish that cable television
companies have websites through which they promote or offer
merchandise related to the television series they show. During
the testimony deposition that opposer took of applicant,
opposer’s attorney showed applicant printouts of a website.
Applicant was not actually familiar with the pages that were
shown to him, and it was opposer’s attorney who represented that
the pages were from a particular cable channel’s website. Thus,
the exhibits were never authenticated. Further, the issue of
whether there would be likelihood of confusion between opposer’s
marks and goods and goods on which applicant might use his mark
in the future is clearly not before us. Moreover, even if we
Opposition No. 91161331
28
The factor of the channels of trade favors applicant.
With respect to the factor of the customers and the
conditions of purchase, applicant has stated that his
television series will be aimed at people ages 18-34 or even
40. Opposer’s men’s fragrance products were initially
intended to appeal to males between 12 and 24, although
opposer’s president testified that the people who bought
them included men in their twenties, and even older. In any
event, opposer’s registrations contain no restrictions, and
we must therefore assume that its fragrance products can be
used by all men, including those in applicant’s intended
demographic. Opposer’s products may be purchased by both
the users and by women who buy them as gifts.
The parties’ goods and services, therefore, must be
deemed to be sold or offered to the same consumers, who are
the members of the general public. These consumers cannot
be said to have a particular sophistication about these
goods and services. Moreover, the goods and services would
not be purchased with a great deal of care. Applicant’s
television series would be “free,”18 and the decision to

accepted all of this speculation and assumed, arguendo, that
there may be licensed items for applicant’s television series
that would be offered through a television channel’s website, as
we stated above, the mere fact that goods are offered through the
Internet on separate websites is not a sufficient basis for us to
find that the goods are sold in the same channels of trade.
18 Although cable and satellite television service is purchased,
with the exception of pay-per-view selections, there is normally
no additional cost for a specific program provided through such
media.
Opposition No. 91161331
29
watch the program might well be made on impulse. Opposer’s
fragrance products are designed to appeal to the mass
market, and are sold at a relatively low price point, as
compared with designer fragrances. Thus, the decision to
buy one of these products might be made on impulse, and in
any event is not likely to be the subject of great
deliberation or care. Accordingly, we find that this du
Pont factor favors opposer. However, it is far outweighed
by the factors of the differences in the marks and the
goods/services. That is, because there is no clear
relationship between fragrance products and an animated
television series, we do not think that, even on impulse, a
viewer will tune in to applicant’s television program
because he thinks there is a connection with opposer’s
products. Similarly, even if a purchaser chooses his
fragrance product on impulse, because of the differences in
the marks and the goods/services, he is not likely to assume
that the source of the goods is associated with the source
of the television program.
The next du Pont factor we consider is the fame of
opposer’s marks. Using the figures reported in the
testimony deposition of opposer’s president and in opposer’s
brief,19 opposer’s sales of BOD/BOD MAN products amounted to

19 As noted previously, the exhibits providing actual sales and
advertising figures were filed under seal. Therefore, we will
refer here to the figures set forth in opposer’s brief and in
Opposition No. 91161331
30
under $8.6 million in 2001, under $9.7 million in 2002,
almost $12 million in 2003 and under $17 million in 2004,
and since the inception of the product line opposer has
spent $23 million in advertising, including $2.5 to $6
million annually on television advertising. These figures
indicate that opposer, which has used its marks since 2000,
has achieved some degree of success with its BOD/BOD MAN
brand. However, the evidence falls far short of
demonstrating that its marks are famous. While opposer has
not attempted to put these figures in perspective,20 a
report opposer submitted that was taken from information
prepared by Information Resources Inc., a packaged goods
consumer product movement monitoring service, does give us
some basis for comparison. In the last quarter of 2004, the
total dollar sales figures for brands in the “men’s fine
fragrance category--mass” was $61.8 million. Of this
number, opposer’s sales were $1.5 million. Many brands had
higher sales figures, including Coty Stetson with $3.8
million, Coty Adidas Moves with $3 million, Curve For Men
with $2.8 million, Davidoff Cool Water with $2.5 million,
and Tommy with $1.7 million. Although during that quarter

opposer’s president’s testimony deposition, both of which are
part of the public record.
20 “Raw numbers of product sales and advertising expenses may
have sufficed in the past to prove fame of a mark, but raw
numbers alone in today’s world may be misleading…. Consequently,
some context in which to place raw statistics is reasonable.”
Opposition No. 91161331
31
opposer’s BOD MAN fragrance products ranked number one in
unit sales, such a ranking in a single quarter, and
representing a 124% increase from the previous quarter, does
not indicate a consistent pattern of significant market
share, in a total market which opposer has limited by
defining it narrowly.21 We also note that opposer compares
its figures with those in Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed.
Cir. 1984), in which the involved mark was found to be
famous. Opposer states that the plaintiff in that case had
annual sales of $25 million and total advertising
expenditures exceeding $3 million. Opposer has omitted the
fact that the plaintiff in Specialty Brands had used its
mark for 40 years, as compared with opposer’s use since
2000. Moreover, the appeal in that case was decided in
1984; thus, those figures represent sales and advertising as
of the early 1980’s. Certainly comparable figures twenty
years later would be significantly higher.22 As opposer’s

Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002).
21 Even limited sales can appear to be impressive if one narrowly
defines the universe of products.
22 Opposer also cites to Estee Lauder, Inc. v. Cinnabar 2000
Haircutters, Inc., 218 USPQ 191 (SDNY 1982), asserting that
“advertising expenditures of more than $1.5 million and sales of
more than $40 million demonstrated strength and fame of mark.”
Brief, p. 23. That case involved a claim under Section 368-d of
the New York General Business Law, which the Court specifically
stated did not involve the Lanham Act claim of likelihood of
confusion. Moreover, the ruling in that case was that the
plaintiff’s mark was distinctive. No mention was made of the
“fame” of the mark. Nonetheless, even if the Court had found the
Opposition No. 91161331
32
president stated, “one of the constants in the advertising
business has been 10 to 15 percent increases every single
year, in terms of the cost of advertising time.” Test.
dep., p. 11. Accordingly, we cannot find opposer’s BOD/BOD
MAN marks to be famous.23
The only other du Pont factor discussed by the parties
is that of actual confusion. There is no evidence of any
instances of actual confusion. However, because applicant
has not yet used his mark for his entertainment services,
and at best has made only limited, sporadic efforts to sell
his series to a television producer or channel, there has
been no opportunity for such confusion to occur.
Accordingly, we regard this factor as neutral.
After considering all of the relevant du Pont factors,
we find that opposer has not proven that the use of
applicant’s mark BM BODYMAN and design for the identified
services is likely to cause confusion with BOD and BOD MAN
for opposer’s goods.
Decision: The opposition is dismissed.

plaintiff’s mark to be famous, the sales and advertising figures
recited in that opinion were from the early 1980s.
23 As noted, the sales figures for opposer’s products show that
opposer has achieved some degree of success with its BOD/BOD MAN
brand. Although the sales and advertising figures provide some
evidence of the strength of opposer’s marks, they are
counterbalanced by the suggestiveness of the marks, due to the
suggestiveness of the word BOD and the descriptiveness of the
word MAN for body sprays for men. Accordingly, opposer has not
shown that its marks are entitled to a broad scope of protection.