The Mentho-latum Companyv.Skin Products, Inc.

Trademark Trial and Appeal Board

Apr 3, 2007

No. 91160694 (T.T.A.B. Apr. 3, 2007)

Hearing: October 19, 2006 Mailed: April 3, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Mentholatum Company substituted for SmithKline Beecham
Corporation1
v.
Skin Products, Inc.
_____

Opposition No. 91160694
_____

Gary D. Krugman, Leigh Ann Lindquist and Shahrzad Poormosleh of
Sughrue Mion, PLLC for The Mentholatum Company.

Michael A. Painter of Isaacman, Kaufman & Painter for Skin
Products, Inc.
______

Before Holtzman, Rogers and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Skin Products, Inc. has filed an application to
register the mark OXYCEUTICALS (in standard character form) for
"non-medicated acne treatment creams and lotion" in Class 3;2

1 Opposer filed a consented motion to substitute The Mentholatum
Company as plaintiff in this proceeding in view of an assignment of
opposer's pleaded marks thereto. A copy of the assignment documents
has been submitted. The motion to substitute is granted.

2 Application Serial No. 76498695, filed March 12, 2003, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Opposition Nos. 91160694
2
Opposer filed a notice of opposition against the application
on May 24, 2004, asserting as its ground for opposition, priority
and likelihood of confusion under Section 2(d) of the Trademark
Act. Opposer alleges prior use and registration of five marks
consisting of or comprising the term OXY, including Registration
No. 1869207 for the mark OXY for "acne medication." Opposer
claims that applicant's mark, when applied to applicant's goods,
so resembles opposer's previously used and registered OXY and OXY
formative marks as to be likely to cause confusion.
Applicant, in its answer, denied the salient allegations of
the opposition.3
The record includes the pleadings; the file of the involved
application; opposer's notice of reliance on status and title
copies of four of its pleaded registrations; opposer's testimony,
with exhibits, of James Corbett Brown, opposer's brand manager;4
and applicant's testimony, with exhibits, of Jeffrey Steven
Lapin, applicant's president.
Both opposer and applicant filed briefs. An oral hearing
was held.

3 Applicant also asserted affirmative defenses of estoppel and
acquiescence. However, these defenses were not pursued at trial
and they are accordingly considered waived.

4 Portions of the testimony and exhibits have been designated
confidential pursuant to a stipulated protective agreement filed by the
parties on June 16, 2005.
Opposition Nos. 91160694
3
Priority
Opposer has made of record status and title copies of the
following registrations:5
OXY (in typed form)

for "acne medication" in Class 5 (Registration No. 1869207;
issued December 27, 1994; renewed);

for "acne medication" in Class 5 (Registration No. 1873555;
issued January 17, 1995; renewed);

OXY 10 (in typed form)
for "medication for treatment of acne" in Class 5;
(Registration No. 1141969; issued December 2, 1980;
renewed); and

THINK OXY, THINK OXYGEN. (in typed form)

for "acne medication" in class 5 (Registration No. 2582225;
issued June 18, 2002).

Thus, opposer's standing has been established, and its
priority with respect to the registered marks for the goods
identified therein is not in issue. King Candy Co., Inc. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In addition, opposer has demonstrated first use of the

5 The record copies of the registrations show ownership of the
registrations in the name of the original plaintiff SmithKline Beecham
Corporation. However, the parties have stipulated that title to the
registrations has passed to The Mentholatum Company, and we take
judicial notice that Office records have now been updated to reflect
ownership of the registrations in the name of The Mentholatum Company.
See TBMP §704.03(b)(1(A) (2d ed. rev. 2004).

Opposition Nos. 91160694
4
mark OXY on a variety of acne treatment products prior to the
March 12, 2003 constructive date of first use of the subject
application.
Likelihood of confusion
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
In our likelihood of confusion analysis we will direct our
attention to the registered mark of opposer which can be
considered closest to the mark in the subject application, namely
Registration No. 1869207 for the mark OXY (in typed form) for
"acne medication."6
We turn first to the goods, keeping in mind that the
question of likelihood of confusion must be determined on the
basis of the identification of goods set forth in the application

6 We note applicant's argument in its brief regarding the likelihood of
confusion with opposer's "OXY family of trademarks." However, opposer
neither pleaded a family of marks nor argued a family of marks in its
brief. Furthermore, opposer's counsel confirmed during the oral
hearing that opposer was not basing its claim of likelihood of
confusion on a family marks. We have given applicant's argument no
consideration.
Opposition Nos. 91160694
5
and registration, rather than on what any extrinsic evidence
might show the actual nature of the goods or their channels of
trade or purchasers to be. See J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Based on the identification of goods, applicant's "non-
medicated acne treatment creams and lotions" must be considered
essentially identical to opposer's "acne medication" for purposes
of assessing likelihood of confusion."7 Further, while
applicant's product involves a five-step process using a set of
five solutions, including cleansers and creams, and opposer's
products consist of individual containers of cleansers, creams,
ointments or lotions, the products are in fact functionally
identical. Both parties' products are used for the treatment of
common acne.
Because the goods are considered essentially identical, we
must presume that the channels of trade and purchasers for the
goods are identical as well. Opposer's product is an over-the-
counter acne medication sold through mass merchandiser stores

7 The fact that applicant's acne products are classified in Class 3
(Cosmetics) whereas opposer's products are classified in Class 5
(Pharmaceuticals) has no affect on our determination. Classification
of goods for registration purposes "is designed primarily to facilitate
administration within the Office and cannot serve to extend or to limit
a registrant's rights in the registered mark in a proceeding of this
character." Acomb v. Polywood Plastics Corporation, 187 USPQ 188, 191
Opposition Nos. 91160694
6
such as Wal-Mart, national drug store chains such as CVS and
Walgreens, food stores such as Kroger and Safeway; and
convenience stores. Opposer's products are purchased by
teenagers as well as adults with acne problems. Applicant's
products are also used for treating acne in teenagers and adults.
However, applicant's products are not sold in the retail market
or purchased by ultimate consumers. The products are sold only
to licensed skin care professionals or medical practitioners who
use and apply the products in providing the treatment.
Applicant's products, as identified, may include, but are
not limited to sale in the professional market. In the absence
of any specific restrictions in the application, it must be
presumed that applicant's acne treatment products would be sold
through all normal channels of trade, including all the usual
retail outlets for such goods; and that they would reach all the
usual classes of consumers, including ordinary consumers. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Applicant appears to recognize that absent a limitation in
the identification of goods the respective products must be
deemed to be sold in the same channels of trade. At the same
time, however, applicant argues that due to the expensive nature
of applicant's product, "the purchasers of Applicant's product

(TTAB 1975) (noting, however, that classification may serve "as an
inkling or clue to the general character of such products").
Opposition Nos. 91160694
7
will be deemed to be discriminating purchasers." (Brief, p. 11.)
Applicant's set of acne treatment products sells for $200.
Opposer's various acne treatment products range from $3.50 to
$5.00, depending on the size of the container, the type of
product and/or the strength of the formulation. Again, the
problem with applicant's argument is that applicant's
identification of goods is not limited to any particular price
point. We must presume that applicant's acne treatment products
sell in all the normal price ranges which would include the
inexpensive price range of opposer's products. See In re Opus
One, 60 USPQ2d 1812 (TTAB 2001).
Further, while these consumers may care about the products
they are purchasing, or exercise a certain degree of care in
selecting these products, they are not necessarily sophisticated
purchasers or likely to exercise a high degree of care in terms
of examining the trademarks. In fact, because opposer's products
and those which we must presume to be encompassed by applicant's
identification are inexpensive, common consumer products,
purchasers may exercise less care in their purchasing decision,
thus increasing the risk of confusion. See, e.g., In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289.
We turn next to a discussion of the marks, and first to the
factor of fame because this factor "plays a 'dominant role' in
the process of balancing the du Pont factors." Recot Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
Opposition Nos. 91160694
8
We are not persuaded by the record in this case that OXY is a
famous mark. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1819 (TTAB 2005) ("it is the duty of a plaintiff asserting
that its mark is famous to clearly prove it.").
Opposer has used the mark OXY continuously for over 30 years
on acne treatment products. The mark is used in connection with
a line of acne treatment products sold in a variety of sizes,
forms and strengths. The products include Oxy Maximum Strength
Daily Cleaning Pads, OXY Blackhead Clearing, Oxy Maximum Strength
Wash, and Oxy Sensitive Skin Vanishing Treatment. Opposer’s
products are sold throughout the United States in mass
merchandiser stores such as Wal-Mart, K-Mart and Target; national
drugstores, such as CVS and Walgreens; grocery store chains such
as Safeway and Food Lion, "club" stores such as BJ's and Costco,
and convenience stores.
Opposer has advertised and promoted its products over the
years in national magazines such as Teen People and Sports
Illustrated for Teens; through in-store displays and shelf
advertisements; in free-standing inserts in newspapers; on radio
and on national network and cable television on programs such as
MTV and other teen-focused programs; and on opposer's website
(www.oxyoxygen.com).
More recently, opposer has conducted "back-to-school"
Internet contests and other promotions directed to the teenage
market. These promotions were run at or through opposer's
Opposition Nos. 91160694
9
website. Between 2003 and 2004, opposer conducted three such
promotions including a contest called the "New Face of Oxy" which
featured instant messaging and the opportunity to win prizes.
The contest attracted 989,000 visitors to the website and
843,000,000 "impressions" over the three-months the contest was
run. It is unclear whether the popularity of the contest would
be attributed to brand recognition of the OXY product or the fact
that the contest provided the opportunity for instant messaging
which, as Mr. Brown states, is "something that is very popular
with teens today." (Test., p. 27.)
Opposer has introduced the results of a marketing study
conducted to track OXY brand awareness among consumers.8 The
study was conducted in 2002 and was prepared as part of opposer's
regular business activities and not in connection with
litigation. The study tested both aided and unaided brand
awareness among teenagers and adults. We have only the summary
of the results and not the specific questions that were asked
during the study except for Mr. Brown's general comment about
what an "unaided" and "aided" brand awareness question might be.
It is difficult to evaluate the reliability of the study or the
significance of the results. Nevertheless, it appears to us that
although the level of "unaided brand awareness" for OXY products

8 The marketing study as well as opposer's sales and advertising
figures (discussed below) are confidential. Accordingly, specific
numbers and figures relating to this information will not be
discussed.
Opposition Nos. 91160694
10
ranks high among the different brands of acne treatment products,
at the same time, it is not the highest, and its ranking falls
well below the brand with the highest level of unaided awareness.
Opposer has submitted sales figures for the years 1999-2004
which show a steady decrease in sales since 2000 and since the
time the 2002 marketing study was conducted. Opposer has also
submitted advertising expenditures for 1999, and also for the
years 2002 through the first half of 2004. These figures show a
similar decline in advertising expenditures since 2002. In
addition, the marketing study summary indicates a double-digit
decline in Oxy brand usage from the previous year.
Notwithstanding what appears to be extensive advertising and
promotional activities, the evidence overall tends to show a
downward trend in consumer awareness in recent years.
Mr. Brown estimated that opposer has a 10% share of the acne
treatment market but this figure is not particularly meaningful
in a vacuum. This percentage, on its face, does not appear to be
a large market share, and we cannot determine the level of
dominance in the market that figure represents. For example,
there is no testimony as to how many other companies compete in
the market or whether that percentage is large or small in
relation to the shares of those other companies.
Accordingly, the evidence falls short of establishing fame.
Nevertheless, we find that the evidence is sufficient to show
that opposer's mark OXY has achieved at least some degree of
Opposition Nos. 91160694
11
recognition and strength in the market and that the mark is
therefore entitled to a broader scope of protection than might be
accorded a less distinctive mark.
Applicant, however, argues that opposer's mark is neither
distinctive nor strong and that it is entitled to only a limited
scope of protection. Applicant contends that the term "oxy" is
an abbreviation for the word "oxygen" and that it designates
products that include and/or use oxygen to perform the stated
function of the products. In support of its contention,
applicant points to two dictionary references, Acronyms,
Initialisms, & Abbreviations Dictionary Seventh Edition; and
Abbreviations Dictionary Eighth Edition, with definitions of
"oxy" as abbreviations for, among other things, "oxygen"; Mr.
Lapin's testimony that applicant selected the term "OXY" to
denote "oxygenation" (Test., p. 19) as an antibacterial agent to
kill bacteria that causes or contributes to acne; and printouts
from about 16 third-party websites selling various products that
utilize or include oxygen to perform the function of the product
under names that include the term "Oxy." Based on this evidence,
applicant argues that the widespread use of the term shows a
"crowded" market and suggests that consumers have become so
conditioned by the third-party uses that consumers are accustomed
to distinguishing the marks even on the basis of small
differences in the marks.
Opposition Nos. 91160694
12
The website evidence does not persuade us that opposer's
mark is weak or that purchasers of opposer's acne treatment
products would understand the meaning of OXY as "oxygen." The
factor to be considered in determining likelihood of confusion
under du Pont is the number and nature of similar marks "in use
on similar goods." See In re E. I. du Pont de Nemours & Co.,
supra at 567. While the website evidence is evidence of use, it
is of limited probative value particularly since there is no
information as to the extent of exposure of the websites to the
public or the public's familiarity with them. See Sports
Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782
(TTAB 2001). Moreover, with one possible exception, "Oxy" is not
used on these websites in connection with similar goods. In fact
they are for distinctly different goods. For example, "Oxy
Twist" is for an exercise machine (nugaforlife.com); "Oxy-
Cleanse" capsules are for "colon care" (centipedeindustries.com);
"Oxy-Septic" is for septic system drainfield cleaner
(oxyboost.com); "Oxi Clean" is for fabric stain remover
(oxiclean.com); and "Oxy-Chum" is for live bait tank oxygen
systems (oxyedge-chum.com). In the majority of examples, "Oxy"
is used in connection with dietary or nutritional supplements.
Some examples of these are "Oxy-Response by Source Naturals"
(taoofherbs.com); "Oxy Life, Oxygen with Colloidal Silver & Aloe
Vera" (southnatural.com); and "Oxy-Gen Caps" (oxyinfo.com).
There is no indication that the dietary supplements are used to
Opposition Nos. 91160694
13
treat acne or are at all useful for that purpose. Also, Mr.
Brown testified that unless the supplements were promoted for the
treatment of acne, they would not be considered competitive
goods. Thus, none of these third-party uses is particularly
relevant. The single example of use of "Oxy" on an arguably
similar product, "Oxy Skin Cream" (donsbach.com), is clearly
insufficient to show a crowded field of "Oxy" marks. This
evidence as a whole fails to show that "Oxy" is commonly used, or
that it has a commonly understood meaning as "oxygen" in
connection with acne treatment products. Similarly, applicant's
reasons for selecting the term "OXY" as part of its mark are not
persuasive. Applicant selected the term to refer to the benefits
of its oxygenation machine, not the acne medication itself.
The two dictionary references to "oxy" as an abbreviation
for "oxygen," in and of themselves, may not be sufficient to
convince us that consumers would necessarily understand the
meaning of "oxy" as "oxygen" or that they would necessarily
associate that meaning with opposer's product. However, the
record shows that opposer has promoted an association of OXY with
"oxygen" and its beneficial effects in the treatment of acne.
The domain name for opposer's website is "oxyoxygen.com"; opposer
owns a registration that associates "oxygen" with OXY (THINK OXY,
THINK OXYGEN) and opposer promotes the slogan in its print
advertising (see, e.g., Brown Exh. 13); the wording "Releases
active oxygen to kill acne-causing bacteria" appears in large
Opposition Nos. 91160694
14
print on at least one of opposer's packages (Brown, Exh. 3B) and
"OXY works with oxygen to fight pimples" appears on another
(Brown, Exh. 11, p. 3). Also Mr. Brown states that opposer
"chose to feature" in communication and advertising "how active
oxygen works" (Test., p. 58); and the results section of
opposer's marketing study states that "The oxygen message is
clearly getting through to teens."
We find that OXY would be perceived as a suggestive term
when applied to opposer's acne treatment products. Nevertheless,
while the mark is suggestive by its nature, it has been shown to
be very strong and distinctive in the marketplace, and it is
therefore not entitled to only a narrow scope of protection.
We turn then to a comparison of opposer's mark OXY with
applicant's mark OXYCEUTICALS, keeping in mind that when goods
are essentially identical, "the degree of similarity necessary to
support a conclusion of likely confusion declines." Shen
Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238,
73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
parties' marks are similar in sound and appearance. The strong
and distinctive term OXY is opposer's entire mark and, as the
Opposition Nos. 91160694
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first term in OXYCEUTICALS, it is aurally and visually the
dominant feature of applicant's mark. It is not significant that
applicant's mark is presented as a single term. See Seaguard
Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984)
(SEA GUARD and SEAGUARD are "essentially identical").
Further, the term OXY is dominant in conveying the meaning
and creating the commercial impression of applicant's mark. To
the extent that "OXY" is viewed as a shortened form of "oxygen,"
thereby suggesting a benefit of opposer's products, that meaning,
as applicant admits, would be the same in applicant's mark. The
suffix CEUTICALS in applicant's mark does not change the meaning
or commercial impression created by OXY alone, but instead merely
enhances it, particularly in view of the suggestive nature of
that suffix in relation to applicant's acne treatment product.
Mr. Lapin testified that "ceuticals denotes pharmaceuticals or
medical, quasi medical ingredients." (Test., p. 19.) Purchasers
who are familiar with opposer's line of OXY products, upon later
encountering applicant's mark OXYCEUTICALS on the essentially
identical products, are likely to believe that opposer has added
another medicated OXY product to its line.
Finally, the asserted absence of evidence of actual
confusion is a neutral factor in this case. Applicant's mark has
been in use a relatively brief period of time, since March 2003;
applicant's products are sold in different channels of trade to
different purchasers; and we have no information regarding the
Opposition Nos. 91160694
16
extent of applicant's use or whether a meaningful opportunity for
actual confusion ever existed. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992).
In view of the foregoing, and because highly similar marks
are used in connection with essentially identical goods, we find
that confusion is likely.
Decision: The opposition is sustained, and registration to
applicant is refused.