Product Brands SRL

Trademark Trial and Appeal Board

Feb 28, 2019

No. 86165262 (T.T.A.B. Feb. 28, 2019)

Mailed: February 28, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Product Brands SRL
_____

Serial No. 86165262
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Kevin A. Thompson of Ladas & Parry LLP,
for Product Brands SRL.
Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Wellington, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Product Brands SRL (“Applicant”) seeks registration on the Principal Register of
the mark depicted below for “Cosmetics, makeup, nail polish and preparations for the
care of the nails,” in International Class 3.1

1 Application Serial No. 86165262 was filed on January 14, 2014, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation a bona fide intent to use the mark in
commerce. The application includes the following description of the mark: “The mark consists
of the stylized word ‘VALMY’. Above the ‘MY’ portion is a design comprised of an upside down
tear drop with curved elements at the bottom and with a sideways diamond appearing below.”
Color is not claimed as a feature of the mark.
This Opinion is Not a
Precedent of the TTAB
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with Registration No. 1300075 for the typed2 mark CHRISTINE VALMY
for, inter alia:
cosmetics-namely, makeup base, bronzer, facial powder,
facial blush and brush, contour shading makeup,
foundation facial cream, blemish cover sticks, compressed
facial powder, lipsticks, lip liner pencils, lip liner pencil
refills, lip gloss, rouge, eye liners, mascaras, eyebrow
pencils, eyebrow pencil refills, lash thickener, eye shadow,
eye cleansing pads, nail polish, nail gloss, eyelashes;
brushes as part of makeup kit3
in International Class 3.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
3 Registered on the Principal Register on October 16, 1984; renewed. The registration
includes the following statement: “The name ‘Christine Valmy’ identifies a living individual
whose consent is of record.”
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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, though not exclusive,
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); In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
A. Similarities Between The Goods; Trade Channels
We first compare the similarities between Applicant’s goods and Registrant’s
goods, including their respective channels of trade and classes of purchasers. Our
determination regarding the similarity of the goods, channels of trade and classes of
purchasers is based on the goods as they are identified in the application and
registration, respectively. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990); see
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
In this case, the goods in Applicant’s application and the cited registration are
identical in part: each includes “cosmetics” and “nail polish.” Because the goods are
identical in part, we must presume that the channels of trade and classes of
purchasers for these goods are the same. See Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Yawata
Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
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1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade
and classes of consumers, the Board was entitled to rely on this legal presumption in
determining likelihood of confusion). For each involved class of goods or services in
an application, and here there is only one, it is sufficient for a refusal based on
likelihood of confusion that relatedness is established as to any item encompassed by
the recitation of goods or services. Primrose Ret. Cmtys., LLC v. Edward Rose Senior
Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)) (“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 recitation of [goods] in that class.”).
Accordingly, the second and third du Pont factors regarding the goods, and the
trade channels and classes of purchasers to whom the goods are offered, heavily favor
a finding of likelihood of confusion.
B. The Marks
We next consider the first du Pont factor, that is, whether Applicant’s VALMY
and design mark and Registrant’s CHRISTINE VALMY mark are similar when
viewed in their entireties in terms of appearance, sound, connotation and overall
commercial impression. See Stone Lion, 110 USPQ2d at 1160 (quoting Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005)). In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree of similarity between the
marks necessary to find likelihood of confusion need not be as great as where there
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is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007). 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 terms of their overall commercial impression that
confusion as to the source of the goods offered under the respective marks is likely to
result. In re i.am.symbolic, LLC, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (citing
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed.
Cir. 2012) (finding sufficient similarity when “persons who encounter the marks
would be likely to assume a connection between the parties”).
Applicant’s mark is . The cited mark is CHRISTINE VALMY.
Applicant argues that there is no likelihood of confusion because “(1) the common
term, VALMY, is more than a surname as it has geographic significance, (2) the Cited
Mark is an inseparable unitary mark, (3) Applicant’s Mark is distinguishable from
the Cited Mark to avoid consumer confusion, and (4) Applicant’s longstanding use
and foreign fame help to distinguish the marks.” 17 TTABVUE 9.
1. Does Applicant’s Mark Have Geographic Significance?
Applicant claims that its mark originated in Venezuela, its goods are produced in
Venezuela, and that Venezuela is Applicant’s biggest market. Id. Applicant contends
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that its mark would therefore be understood as a reference to the French city of
Valmy, “due to the special association Venezuelans have with the city of Valmy in
France.” 17 TTABVUE 10.
To the extent Venezuelan consumers associate Applicant’s mark with Valmy,
France, this is irrelevant. The test for likelihood of confusion is whether United States
consumers are likely to confuse the cited mark with Applicant’s mark. The only
evidence Applicant submitted to establish that United States consumers might be
aware of Valmy, France are two Wikipedia entries, one giving general information
about Valmy and the other the life history of General Miranda of Venezuela, who
played a role during the French revolution in the battle of Valmy.4 Applicant has not
shown that it has a presence, even an Internet presence, in the United States. Its
application is based on its intent to use the mark, and there is no record evidence of
Applicant advertising to U.S. consumers, or making sales in the United States. Our
focus is on United States consumers, but there is no evidence that consumers
perceive a connection to Valmy, France. See, e.g., Anheuser-Busch, LLC v. Innvopak

4 Applicant submitted Wikipedia entries with its October 16, 2014 and May 10, 2017
Responses to the initial and final Office Actions. These entries bear access dates of 9/23/2014
and 10/14/14. We have considered this Wikipedia evidence, bearing in mind the limitations
inherent in this reference work, because the Examining Attorney had an opportunity to
consider and rebut the evidence. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032
(TTAB 2007); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1208.03 (June 2018) and authorities cited in that section. However, we do not
consider the evidence attached to Applicant’s appeal brief, properly objected to by the
Examining Attorney, that purports to be updated versions of the Wikipedia sections. Such
evidence is untimely. Trademark Rule 2.142(d). When an applicant wants the examining
attorney to consider additional evidence after the filing of an appeal, the proper procedure is
to file a request for remand supported by a showing of good cause. See TBMP § 1207.02 and
authorities cited in that section.
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Sys. Pty Ltd., 115 USPQ2d 1816. 1823 (TTAB 2015) (finding it “very unlikely that
relevant consumers perceive Opposer’s famous BUDWEISER trademark as
suggesting a connection to what Applicant admits is ‘a small town in Bohemia.’”); cf.
In re Isabella Fiore LLC, 75 USPQ2d 1564, 1568 (TTAB 2005) (“[W]e are concerned
with the meaning of the mark in the United States.”) (citing In re Wickuler-Kupper-
Brauerei KGaA, 221 USPQ 469, 470 n.2 (TTAB 1983) (“It is the surname significance
in the United States which is determinative of the registrability issue”). There is
simply no way to know how many United States consumers have read the Wikipedia
entries.
2. Is Applicant’s Mark Famous?
Applicant argues that because it has used its mark for over 40 years in other
jurisdictions, the mark has become famous overseas. 17 TTABVUE 14-15. Applicant
does not assert that it has used its mark in the United States or that its mark has
become known within the United States. Trademark activity outside the United
States is generally immaterial to ownership of rights in the U.S. See Nat’l Cable
Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 U.S.P.Q.2d 1424
(Fed. Cir. 1991); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed.
Cir. 1990) (“The concept of territoriality is basic to trademark law; trademark rights
exist in each country solely according to that country’s statutory scheme.”); J. Thomas
McCarthy, MCCARTHY ON TRADEMARK AND UNFAIR COMPETITION § 16:21 (5th ed.)
(“Foreign marks are not afforded any protection in the United States until they have
been used in the United States.”); cf. Fiat Group Automobiles S.p.A. v. ISM Inc., 94
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USPQ2d 1111, 1113 (TTAB 2010) (finding a pleading of use of a mark outside the
United States without any pleading of widespread recognition of the mark within the
United States “is an insufficient basis for a claim of dilution”). Indeed, were
Applicant’s mark well-known within the United States, such fame may engender
reverse confusion with the mark of the cited registration. See In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has
been used to describe the situation where a significantly larger or prominent
newcomer ‘saturates the market’ with a trademark that is confusingly similar to that
of a smaller, senior registrant for related goods or services.”). Finally, Applicant’s
assertion that its mark is famous overseas is not supported by the record. Enzo
Biochem Inc. v. Gen Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)
(“Attorney argument is no substitute for evidence.”).
3. Comparison Of The Marks
We turn now to Applicant’s second and third points, that the registered mark is
unitary and that the marks are not confusingly similar.
First, Applicant argues that the cited mark is unitary, and therefore creates “a
single and distinct commercial impression” from Applicant’s composite mark. The
Court of Appeals for the Federal Circuit has set forth the elements of a unitary mark:
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a unitary
mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own
independent of the meaning of its constituent elements. In
other words, a unitary mark must create a single and
distinct commercial impression.
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Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir.
1991). Although the constituent elements of the cited mark are combined to form an
individual’s complete name, consumers will readily perceive that the mark is
comprised of first and last names, and that the surname is “Valmy.” Thus, even if the
cited mark is unitary, confusion is still likely based on the type of mark (an
individual’s name), and the shared surname.
In fact, the Federal Circuit and the Board have held that when conflicting marks
consist of a surname and a full name ending in the same surname, confusion is likely.
As the Board stated in Modern Shoe Co. v. B. B. Walker Shoe Co., 170 USPQ 530, 531
(TTAB 1971):
We have here a surname “WALKER” and a full name
“JOHNNIE WALKER”. The full name would represent an
individual. The surname “WALKER” does not per se
identify any particular individual but it does identify any
and all persons who bear that surname, including
“JOHNNIE WALKER”. And, it is not uncommon to identify
an individual by a surname without reference to a first or
Christian name, for example Nixon or Rockefeller in
reference to well-known political figures. Thus, “WALKER”
and “JOHNNIE WALKER” could be regarded as one and
the same individual. These names when used as marks will
create the same impression and such impression is greatly
enhanced because they are used on directly competitive
goods, even as to price. We are of the opinion that the
circumstances give rise to a likelihood of confusion.
Id. (internal citations omitted). See also In re C.H. Hanson Co., 116 USPQ2d 1351,
1353 (TTAB 2015) (holding C.H. HANSON for various hand tools confusingly similar
to HANSON for related hand tools) (citing In re Chatham Int’l, Inc., 380 F.3d 1340,
1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (holding JOSE GASPAR GOLD for
tequila confusingly similar to GASPAR’S ALE for beer and ale)); Harry Winston, Inc.
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v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1446-47 (TTAB 2014) (holding
BRUCE WINSTON for gemstones and jewelry confusingly similar to WINSTON for
polished diamonds and jewelry); In re SL&E Training Stable Inc., 88 USPQ2d 1216,
1219 (TTAB 2008) (holding SAM EDELMAN for luggage, wallets, and various bags
confusingly similar to EDELMAN for identical goods in part); cf. Nina Ricci S.A.R.L.
v. E.T.F. Enter. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989)
(VITTORIO RICCI for handbags, clothing and retail store services in the field of
clothing is likely to cause confusion with NINA RICCI for clothing and accessories
even though Vittorio Ricci was the name of defendant’s principal); Jack Winter Inc.
v. Lancer of California, Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for
clothing is likely to cause confusion with JACK WINTER for clothing). Thus, because
the marks share the common term VALMY, they are similar in appearance,
pronunciation, connotation and overall commercial impression.
Having considered the similarities between the literal portions of the marks, we
now look at the marks in their entireties. Applicant’s mark includes the design of a
“Flower of Liz.”5 When a mark comprises both a word and a design, the word is
normally accorded greater weight because it would be used by purchasers to request
the goods or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d
1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999)); see also In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905,

5 In its brief, Applicant characterizes its design as “a stylized version of the ‘Flower of Liz.’”
17 TTABVUE 7.
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1908 (Fed. Cir. 2012) (“In the case of a composite mark containing both words and a
design, ‘the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed.’”) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82,
218 USPQ 198, 200 (Fed. Cir 1983)). This is not to say that the Board cannot, in
appropriate circumstances, give greater weight to a design component of a composite
mark, such as when the word portion of a mark is highly suggestive or descriptive or
the design is the mark’s most visually prominent feature. Neither exception applies
in this case. “VALMY” is not highly suggestive or descriptive nor is the Flower of Liz
design the mark’s most visually prominent feature, and obviously where an
individual’s name is associated with goods, consumers are most likely to call for the
goods by that individual’s name.
In sum, the marks are similar in their overall appearance, pronunciation,
connotation and commercial impressions. The first du Pont factor favors a finding of
likelihood of confusion.
II. Summary
Consumers familiar with Registrant’s CHRISTINE VALMY cosmetics and nail
care products are likely, when confronted with Applicant’s VALMY and design
cosmetics and nail care products, to believe that the goods are manufactured by the
same company or that Applicant’s goods are sponsored or affiliated with Registrant.
Indeed, consumers familiar with Registrant’s CHRISTINE VALMY line of cosmetics
and nail care products may mistakenly believe that Applicant’s VALMY and design
products represent a different line from the same company. The marks are similar in
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appearance, pronunciation, connotation and overall commercial impression. There is
a likelihood of confusion.
Decision: The refusal to register Applicant’s mark under Trademark Act
Section 2(d) is affirmed.