EX (T.T.A.B. Feb. 28, 2019)

Product Brands SRL

Trademark Trial and Appeal BoardFeb 28, 2019

EX (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 _____ 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 Serial No. 86165262 - 2 - 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.” Serial No. 86165262 - 3 - 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 Serial No. 86165262 - 4 - 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 Serial No. 86165262 - 5 - 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 Serial No. 86165262 - 6 - 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. Serial No. 86165262 - 7 - 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 Serial No. 86165262 - 8 - 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. Serial No. 86165262 - 9 - 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. Serial No. 86165262 - 10 - 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. Serial No. 86165262 - 11 - 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 Serial No. 86165262 - 12 - 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.