The Wella Corp.v.It’s a 10, Inc. and It’s a New 10, LLC

Trademark Trial and Appeal Board

Aug 28, 2017

No. 91221520 (T.T.A.B. Aug. 28, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Wella Corp.
v.
It’s a 10, Inc. and It’s a New 10, LLC
_____

Opposition No. 91221520
to Application Serial Nos. 86395361 and 86395889
_____

Thomas M. Williams and Anisha A. Mehta of Ulmer & Berne, LLP
for The Wella Corporation.

Merry L. Biggerstaff and Edward P. Kelly of Tiajoloff & Kelly LLP
for It’s a 10, Inc. and It’s a New 10, LLC.
_____

Before Kuhlke, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant (It’s a 10, Inc. and assignee It’s a New 10, LLC)1 seeks registration of
the mark POTION 10 MIRACLE REPAIR SHAMPOO in standard characters

1 We note the assignment of the entire interest and goodwill of the subject applications from
It’s a 10, Inc. to It’s a New 10, LLC executed, subsequent to the commencement of the
proceeding, on January 3, 2017 recorded at reel/frame 5966/0674. The parties have not
moved to join or substitute a defendant; however, defendant refers to applicant as “It’s a
New 10, LLC (formerly It’s a 10, Inc.)” in its brief. In view thereof, It’s a New 10, LLC is
joined as a party defendant. Western Worldwide Ent. Grp. Inc. v. Qingdao Brewery, 17
USPQ2d 1137, 1138 n.4 (TTAB 1990); Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857
(TTAB 1986).
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(“REPAIR SHAMPOO” disclaimed) for “Hair care preparations; shampoos,” in
International Class 3;2 and POTION 10 MIRACLE REPAIR CONDITIONER in
standard characters (“REPAIR CONDITIONER” disclaimed) for “Hair care
preparations; hair conditioner,” in International Class 3.3
Opposer, The Wella Corporation, has opposed registration of Applicant’s marks
on the ground that as used in connection with Applicant’s goods, the marks so
resemble Opposer’s previously used and registered mark POTION 9 in typed form4
for “hair care preparations, namely, conditioner and hair styling preparations,” as
to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). In addition, Opposer asserts a claim of dilution under Section 43(c) of the
Trademark Act, 15 U.S.C. § 1125. By its answer, Applicant admits the allegations
regarding its application filings and denies the remaining allegations.
RECORD
The pleadings and, by operation of the Trademark Rules, the files of the subject
applications are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.

2 Application Serial No. 86395361, filed on September 15, 2014, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
3 Application Serial No. 86395889, filed on September 16, 2014, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
4 Reg. No. 2301169, issued Dec. 21, 1999. Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. A typed mark is the legal equivalent of a
standard character mark. TMEP § 807.03(i) (April 2017).
Opposition No. 91221520
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Opposer submitted under notice of reliance:5 (1) a printout from the USPTO
Trademark Status & Document Retrieval database (TSDR) consisting of a copy of
its pleaded registration showing its current status and title; (2) printouts from
TSDR consisting of copies of its cancelled registrations for the mark POTION 7 for
“hair care preparations, namely conditioners and styling preparations”; and (3)
copies of printed publications and printouts of web pages wherein its mark POTION
9 is featured.
In addition, Opposer submitted declaration testimony6 with accompanying
exhibits of Emmanuelle Eyraud, Assistant General Counsel, for Professional Beauty
for Coty, Inc.7
Applicant submitted under three notices of reliance: (1) printouts from TSDR
consisting of copies of Applicant’s registrations for marks containing MIRACLE-
formative and 10-formative marks for various hair care preparations;8 (2) copies of
third-party registrations for marks that include the word POTION for various hair
and beauty products;9 and (3) printouts of web pages displaying the word POTION
in connection with third-party hair and beauty products.10

5 15 TTABVUE.
6 Testimony was submitted by declaration pursuant to the parties’ stipulation. 11
TTABVUE.
7 14 TTABVUE. According to the testimony Opposer is in “transition from a P&G-owned
entity to a Coty-owned entity.” Id. at 3 n.1.
8 19 TTABVUE – 21 TTABVUE. Entries 19-21 are the corrected filings for the notices of
reliance initially filed and listed at entry 17.
9 20 TTABVUE.
10 21 TTABVUE.
Opposition No. 91221520
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In addition, Applicant submitted declaration testimony with accompanying
exhibits of Carolyn Aronson, Applicant’s founder and CEO.11
STANDING/PRIORITY
Opposer’s pleaded registration is summarized as follows:12
Registration No. 2301169 on the Principal Register for the
mark POTION 9 in typed form for “hair care
preparations, namely, conditioner and hair styling
preparations,” in International Class 3, filed on June 19,
1995, issued on December 21, 1999, Sections 8 and 15
combined declaration accepted and acknowledged,
renewed.
Because Opposer’s pleaded registration is of record, is valid and subsisting, and
owned by Opposer, Opposer’s standing to oppose registration of Applicant’s marks is
established and Opposer’s priority is not in issue as to the mark and goods listed in
the registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn to the issue of likelihood of confusion under Section 2(d).
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563

11 16 TTABVUE.
12 15 TTABVUE at 8-11.
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(CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003) (listing thirteen factors). Two key considerations are the
similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Further, “[a]lthough confusion, mistake or deception about source or
origin is the usual issue posed under Section 2(d), any confusion made likely by a
junior user’s mark is cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.” Hilson Research, Inc. v. Society
for Human Resource Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993); see also Majestic,
65 USPQ2d at 1205 (“[M]istaken belief that [a good] is manufactured or sponsored
by the same entity ... is precisely the mistake that Section 2(d) of the Lanham Act
seeks to prevent.”).
Relatedness of the Goods, Channels of Trade, Classes of Consumers
We turn first to the goods, channels of trade and classes of purchasers. We must
make our determinations under these factors based on the goods as they are recited
in the applications and registration, respectively. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014). See
also Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
Opposition No. 91221520
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trade or the class of purchasers to which sales of the goods are directed.”) Applicant
presents no argument on these factors.
Applicant’s goods are:
Hair care preparations; shampoos (Application Serial No.
86395361);
Hair care preparations; hair conditioners (Application
Serial No. 86395889).
Opposer’s goods are:
Hair care preparations, namely, conditioner and hair
styling preparations.
Opposer’s “hair care preparations, namely, conditioner” listed in its registration
is identical to Applicant’s “hair conditioners” in Application Serial No. 86395889
and legally identical to Applicant’s “hair care preparations” inasmuch as Applicant’s
“hair care preparations” encompass Opposer’s “conditioner and styling
preparations.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166
(TTAB 2013) (“Under standard examination practice, a semicolon is used to
separate distinct categories of goods or services.”). For the same reason, Opposer’s
“conditioners and styling preparations” are legally identical to Applicant’s “hair care
preparations” in Application Serial No. 86395361. For purposes of our analysis, it is
sufficient that relatedness be established for any item encompassed by the
identification of goods in a particular class in an application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
However, we further find that Applicant’s “shampoos” in Application Serial No.
86395361 are closely related to Opposer’s “conditioners.” Such goods are
Opposition No. 91221520
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complementary and routinely sold and used together. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding MARTIN’S
for wheat bran and honey bread, and MARTIN’S for cheese, likely to cause
confusion). In addition, the record includes several third-party use-based
registrations for hair conditioners and shampoo under a single mark.13 In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel, 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). Accordingly, we find that Opposer’s goods are
identical in part and legally identical in part to Applicant’s goods in Application
Serial No. 86395889; and legally identical in part and closely related in part to
Applicant’s goods in Application Serial No. 86395361.
Considering the channels of trade and classes of purchasers, because there are
no limitations as to channels of trade or classes of purchasers in either of the
applications or Opposer’s registration, we must presume that Applicant’s and
Opposer’s goods travel through all usual trade channels for such goods and are sold
to all classes of prospective purchasers for those goods. See Paula Payne Prods. Co.
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973); and In
re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Moreover, because the
parties’ goods are identical (or legally identical), in part, we must presume that they
move through the same channels of trade and are sold to the same classes of
purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.

13 20 TTABVUE.
Opposition No. 91221520
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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); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-
part related nature of the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers through the same
channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of purchasers”).
In view thereof, the du Pont factors regarding the similarity or dissimilarity of
the goods, channels of trade and classes of consumers weigh in favor of a finding of
likelihood of confusion.
Conditions of Sale
Citing Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1558-59 (Fed. Cir. 2001), Opposer argues that consumers purchase hair care
products on impulse and this factor accentuates the significance of the fame and
strength of its mark because “less care may be taken in purchasing a product under
a famous name.” 24 TTABVUE 31 (quoting Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984)). See also
Kenner Parker Toys Inc. v. Rose Art Indust., Inc., 963 F.2d 350, 22 USPQ2d 1453,
Opposition No. 91221520
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1458 (Fed. Cir. 1992) (where marks are for inexpensive products, this factor
accentuates the significance of a famous mark).
Applicant argues that Opposer has not established that the products at issue are
inexpensive and that Applicant’s products “are all high-end professional hair care
products that are not considered ‘inexpensive’ by consumers and Opposer has made
no showing of [sic] otherwise.” 28 TTABVUE 21. This contention is unpersuasive.
Applicant’s identifications of goods are not limited to expensive hair care products,
but includes within its scope all types of the goods identified, in all relevant price
ranges. Similarly, Opposer’s registration is not limited as to type or price. Although
we do not find Opposer’s mark to be famous, as discussed below, the identified goods
are all common consumer goods that would be purchased by ordinary consumers,
who would exercise only an ordinary degree of care in selecting the goods. We
therefore find the du Pont factor of customer care and conditions of sale to weigh
slightly in Opposer’s favor.
Similarity/Dissimilarity of the Marks
We turn then to the du Pont factor of the similarities and dissimilarities between
Applicant’s marks POTION 10 MIRACLE REPAIR SHAMPOO and POTION 10
MIRACLE REPAIR CONDITIONER, and Opposer’s mark POTION 9. We analyze
“the marks in their entireties as to appearance, sound, connotation and commercial
impression.” Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567). See
also 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
Opposition No. 91221520
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keep in mind that “[w]hen marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Opposer argues that their respective marks all begin with the word POTION
and because it is the first portion it is “most likely to be impressed upon the mind of
a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d
1895, 1897 (TTAB 1988); 24 TTABVUE 20. Opposer further contends that POTION
is the dominant element in Applicant’s marks based on its position as the first word
and the disclaimer of the additional wording REPAIR SHAMPOO and REPAIR
CONDITIONER. Moreover, Opposer asserts that both parties’ marks are followed
by numbers and consumers are likely to shorten Applicant’s marks to POTION 10,
bringing the similarity closer. In particular as to connotation Opposer argues:
[B]oth parties use “POTION (number)” to connote a
wondrous or mysterious product consisting of a defined
number of ingredients. As explained by Opposer’s witness,
“Wella markets POTION 9 as a ‘magic’ treatment, hence
the ‘POTION’ element of the POTION 9 Mark. The ‘9’
refers to the 9 essential extracts in the product.” See
Eyraud Decl., 14 TTABVUE 4 at ¶6. Similarly,
Applicant’s Marks are used in the context of a “miracle”
treatment that is used to provide 10 benefits to a product
user’s hair. See Aronson Decl., 16 TTABVUE 2-3 at ¶¶1,
6; see also id. at 8-12 at Ex. A, Ex. B. Thus, the “POTION”
and numerical connotations are sufficiently similar to
elicit confusion.
24 TTABVUE 21-22.
In sum, Opposer argues that the commercial impression is the same because of
the similar format comprised of the word POTION combined with a number that for
Opposition No. 91221520
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both parties refers to a list of features (9 essential extracts for Opposer’s goods and
10 benefits for Applicant’s goods). In addition, Opposer contends that the natural
numerical progression from 9 to 10 enhances the likely confusion as “consumers are
likely to mistakenly believe that their care products sold under the POTION 10
Marks are [the] new-and-improved, or next-generation, versions of POTION 9 hair
care products.” 24 TTABVUE 24 (quoting Eyraud Decl. ¶ 14, 14 TTABVUE 7).
Opposer points to its earlier use of the mark POTION 7 (referring to 7 nutrients in
the product) in connection with hair conditioners and styling preparations to
demonstrate this numerical progression. Eyraud Decl. ¶ 7, 14 TTABVUE 4-5.
Opposer concludes that “the consuming public is likely to associate Applicant’s
POTION 10 hair care products as being a new or better version of POTION 9
products, emanating from the same source” because “[t]he addition of a higher,
consecutive number ‘essentially creates the commercial impression of an upgraded
or higher feature version of the [POTION] brand.’” 24 TTABVUE 25 (quoting In re
York, Ex Parte Appeal No. 76600403, 11 TTABVUE 7-8 (TTAB February 15, 2007)).
Applicant argues that the dominant portion of its mark is the term MIRACLE.
Applicant supports this argument with several of its other registrations containing
the word MIRACLE and asserts that it “has established a family of trademarks
comprised of MIRACLE for the It’s a 10 Miracle Haircare line, which it has used in
connection with its hair products since the inception of its MIRACLE haircare line
in 2006.” Further, Applicant asserts:
It’s a 10 has at least 28 valid and subsisting federal
trademark registrations for marks comprised of
Opposition No. 91221520
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MIRACLE for its hair care line. Every product in It’s a
10’s extensive MIRACLE hair care line bears a trademark
comprised of MIRACLE and the number 10. The Applied
for Marks are part of this haircare line and are a natural
extension of It’s a 10’s family of MIRACLE marks. It is
clear the diluted term POTION was not intended to be the
dominant portion of the Applied for Marks.
28 TTABVUE 9-10.
The family of marks doctrine is unavailable to a defendant as a defense in an
inter partes proceeding. Mag Instrument, Inc. v. The Brinkmann Corp., 96 USPQ2d
1701, 1715 (TTAB 2010). See also Baroid Drilling Fluids Inc. v. Sun Drilling
Products, 24 USPQ2d 1048, 1052 (TTAB 1992). This includes Applicant’s argument
that POTION 10 MIRACLE REPAIR SHAMPOO/CONDITIONER “is part of the
family of trademarks comprised of MIRACLE” because the issue in this case is
whether Applicant’s POTION 10 MIRACLE REPAIR SHAMPOO/CONDITIONER
marks so resemble Opposer’s POTION 9 mark as to be likely to cause confusion, not
whether Applicant has used other MIRACLE-formative marks with the number 10.
Applicant also argues that the number 10 in its marks connotes that “there are
‘10 instant benefits’ in one product and the product itself is a ‘10’ (i.e., great or
perfect) as evidenced by [Applicant’s] house mark IT’S A 10.” 28 TTABVUE 12.
Since the number 9 in Opposer’s mark refers to the number of ingredients,
Applicant argues, the numbers 9 and 10 have different meanings as applied to the
parties’ respective products. 28 TTABVUE 13.
The first part of Applicant’s marks, POTION 10, conveys a meaning as a phrase
separate from the remainder: MIRACLE REPAIR SHAMPOO/CONDITIONER.
Because that unified element is the first part of each mark, it is likely to be the
Opposition No. 91221520
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most memorable, as consumers are more inclined to focus on the first word or words
in a trademark. See Palm Bay, 73 USPQ2d at 1692; In re Morinaga Nyugyo
Kabushiki Kaisha, 120 USPQ2d 1738, 1742 (TTAB 2014) (confusing similarity of
MT. RAINER and MOUNT RAINER marks heightened by placement as first words
of the mark); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d at 1897 (“[I]t is
often the first part of a mark which is most likely to be impressed upon the mind of
a purchaser and remembered”). It is this part, identical in structure to the entirety
of Opposer’s mark POTION 9, which creates similarities in appearance, sound and
connotation. These similarities, combined with the natural progression of the
numbers, create a very similar commercial impression. Contrary to Applicant’s
argument that the number 9 connotes a list of ingredients and the number 10
connotes a list of benefits which presents a distinction between the marks, both
represent a list of features of the product which is very similar. The progression
from 9 to 10 may connote a superior product, or simply the next in a line of
products, as demonstrated by Opposer’s prior mark, POTION 7.
The addition of the term MIRACLE in Applicant’s marks is compatible with the
connotation and commercial impression of something magical created by the word
POTION, and attaches naturally to the descriptive remainder of the marks
(REPAIR SHAMPOO/CONDITIONER). Thus the word MIRACLE in Applicant’s
mark does not overcome the similarities between POTION 9 and the beginning of
Applicant’s mark POTION 10. The additional disclaimed wording REPAIR
Opposition No. 91221520
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SHAMPOO and REPAIR CONDITIONER in Applicant’s marks merely describe the
goods, and do not serve to distinguish source.14
We find that the similarities in appearance, sound, meaning and overall
commercial impression in the marks, outweigh the dissimilarities. Stone Lion
Capital Partners, L.P. v. Lion Capital LLP, 110 USPQ2d at 1161; In re Mighty Leaf
Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010); Kangol
Limited v. Kangaroos U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983). This factor weighs in Opposer’s favor.
Strength of Opposer’s Mark
Fame of the Prior Mark
Opposer presents evidence and argument on the fame of its POTION 9 mark. In
determining the strength of a mark, we consider both its inherent strength based on
the nature of the mark itself and its commercial strength, based on the marketplace
recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength.”); Top Tobacco,
L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011)
(the strength of a mark is determined by assessing its inherent strength and its

14 In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ([T]here is
nothing improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on consideration of
the marks in their entireties. … That a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly accepted rationale for giving less
weight to a portion of a mark …”).
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commercial strength); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1899 (TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83
(4th ed. 2017) (“The first enquiry focuses on the inherent potential of the term at the
time of its first use. The second evaluates the actual customer recognition value of
the mark at the time registration is sought or at the time the mark is asserted in
litigation to prevent another’s use.”). Market strength is the extent to which the
relevant public recognizes a mark as denoting a single source. Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d at 1899. “[A] mark with extensive public
recognition and renown deserves and receives more legal protection than an obscure
or weak mark.” Kenner Parker Toys, Inc. v Rose Art Indus., Inc., 22 USPQ2d at
1456. See also Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a dominant role in the
likelihood of confusion analysis because famous marks enjoy a broad scope of
protection or exclusivity of use. In the likelihood of confusion context, fame “varies
along a spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v.
Societe des Produits Nestle S.A., 103 USPQ2d at 1440 (quoting Palm Bay, 73
USPQ2d at 1689). See also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 22
USPQ2d at 1456. In view of the extreme deference that is accorded to a famous
mark in terms of the wide latitude of legal protection it receives, and the dominant
role fame plays in the likelihood of confusion analysis, it is the duty of the party
asserting that its mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing
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Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB
2007)).
The conceptual strength of POTION 9 is somewhat diminished by the suggestive
nature of the word “potion” in connection with goods that are mixtures of
ingredients and, as discussed below, its use and registration by third parties for
hair care products. In addition, as explained by Opposer, the number 9 signifies the
number of essential extracts in the product. Nonetheless, Opposer’s mark is
registered on the Principal Register without disclaimer and is accorded all Section
7(b) presumptions, 15 U.S.C. § 1057.
The commercial strength of a mark “may be measured indirectly, among other
things, by the volume of sales and advertising expenditures of the goods or services
traveling under the mark, and by the length of time those indicia of commercial
awareness have been evident.” Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at
1305. In addition, some context in which to place raw statistics may be necessary.
Id. at 1309.
Mr. Eyraud testifies that Opposer: 1) has used the POTION 9 mark since 1993
(14 TTABVUE 5); 2) has actively promoted its mark through advertising, including
in trade and general magazines (in print and online), on its website, and in-store
signage (14 TTABVUE 15-16); and 3) has had substantial sales success (14
TTABVUE 7). The specific advertising and sales evidence was presented under seal.
The advertising figures submitted under seal do not break out spending by
product, so there is no way of knowing the actual amount spent on advertising
Opposition No. 91221520
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POTION 9 products. The sales figures submitted under seal are specific to the
POTION 9 product and are substantial; however, Opposer did not provide evidence
as to the market share for its POTION 9 hair care products (e.g., the substantiality
of sales figures for comparable types of products) to place the impact of its sales
figures in context. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1309.
The only documentary examples of advertising consist of Opposer’s website,
packaging, point of sale displays, and a handful of product catalogs and magazines.
On the other hand, Opposer has used the mark since 1993, and Opposer submitted
evidence of third-party product mentions, including those associated with celebrities
in various magazines. 15 TTABVUE 3-5.15 On balance, although the record does not
support a finding of fame, such that it plays a dominant role, we find that POTION
9 has attained commercial strength for hair care products and accord it a broader
scope of protection despite the weakness of the term POTION discussed below.
The Number and Nature of Similar Marks in Use on Similar Goods
Under the du Pont factor concerning the number and nature of similar marks in
use on similar goods, Applicant addresses the potential weakness of the common
element POTION by submitting excerpts from 43 third-party websites using the
term POTION in connection with hair or other beauty products. The examples with

15 Opposer also asserts that its rights in the POTION 9 mark have become incontestable;
however, “the fact that opposer’s federally-registered trademark has achieved incontestable
status means that it is conclusively considered to be valid, but it does not dictate that the
mark is ‘strong’ for purposes of determining likelihood of confusion.” MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION §§ 11:82 and 32:155 (4th ed. 2017).” Safer v. OMS
Inc., 94 USPQ2d 1031, 1036 (TTAB 2010).

Opposition No. 91221520
- 18 -

beauty products (fragrances, lip balm, skin lotion, eyeshadow, nail polish) other
than hair care products have limited probative value. While such goods may be
considered related for purposes of the du Pont factor “the similarity or dissimilarity
and nature of the goods or services as described in an application or registration or
in connection with which a prior mark is in use,” in connection with this du Pont
factor, the dilutive effect is concerned with use on the same or similar goods, and
the effect dissipates as the examples of goods become less similar. There are 17
examples (two are for the same brand Simply Smooth) for hair care products:16
• Sexy Hair Healthy Sexy Hair Pumpkin Potion Leave In Conditioner
• Momo Hair Potion
• Softsheen Carson Optimum Amla Legend Billion Hair Potion
• Milk shake Styling Potion
• Smooth N Shine Olive & Tea Tree Quench & Repair Potion 3’s
• Giovanni 2chic Ultra-Volume Super Potion with Tangerine and Papaya
Butter
• Scruples Texturizing Paste – Urban Potions
• Livon Silky Potion Detangling Hair Fluid
• Davines Oi/Oil Absolute Beautifying Potion
• Pantene Pro-V Heat Shield Heat Potion Serum
• Brocato Vibracolor Fire & Ice Face Prevent Potion
• Simply Smooth Keratin Repartive Magic Potion Blowout

16 21 TTABVUE.
Opposition No. 91221520
- 19 -

• Simply Smooth Xtend Keratin Reparative Magic Potion
• Schwarzkopf BC Bonacure Hairtherapy Oil Potion
• Keratin Complex Style Therapy Glowtion Potion Styling Oil
• EssentialPotions Hair Potion
• Aveda pure abundance hair potion
In addition, Applicant submitted copies of third-party registrations that include
the word POTION in the marks for various hair care and beauty products, as shown
below.17 Marks that include the word POTION for various beauty products are
registered by 30 different registrants. As noted above, the registrations for beauty
care products other than hair care products have less probative value. Only 12 of
these third-party registrations are for hair care products:

17 20 TTABVUE. Registrations issued under Section 66 or 44 of the Trademark Act have
little to no probative value on this issue and are not included in the chart. See Calypso
Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011).
Registration No. by
Owner
Mark Goods
1683546

GRANDMA’S SECRET
POTION SUPER GRO
(and design)
Shampoo, conditioner
and scalp oil hair
dressing
2766091
4596411
2724181
2910608
4657235
OCEAN POTION (and
design)

FACE POTION

OCEAN POTION
PROTECT AND RENEW
Skincare oils, namely,
sunblock oils, sunscreen
oils, self-tanning oils,
moisturizing oils,
aromatherapy oils,
essential oils for personal
use, perfume oils;
Opposition No. 91221520
- 20 -

4596411

OCEAN POTION (and
design)
skincare lotions, namely,
sunblock lotions,
sunscreen lotions, self-
tanning lotions,
moisturizing lotions,
after-sun lotions, body
mask lotions, skin lotions,
hair lotions, facial
lotions and body lotions
3223628

KEMI ORGANICS
REMOVE CLEANSING
POTION THE
COMPLETE HAIR
CLEANSER (and design
all but KEMI disclaimed)
Organic cleansing
shampoo
3316552

ROCKIN’ RINGLETS
STYLING POTION
(RINGLETS STYLING
POTION disclaimed)
Hair care preparations
3795015 LOTUS POTIONS Non-medicinal hair
care products, namely,
shampoos, conditions,
gels
3046419 PERFECT POTION (and
design)
Soap products, namely,
cleansing soap, shaving
soap, soap for personal
use, liquid soap, and
household cleaning soap;
perfume products,
namely, aromatherapy
perfumes; essential oils
for personal use; cosmetic
and hair care products,
namely facial cleansers
and scrubs, body
cleansers and scrubs,
facial toners, facial and
body moisturisers [sic],
lip balms, skin
treatments, body
deodorants, bath oils,
aftershave, shaving oils,
shaving gels, face
colorants, shampoos,
Opposition No. 91221520
- 21 -

hair conditioners, and
hair treatments;
massage oils
4297023 POTION OF THE
TROPICS (and design)
Body lotions; Hair
lotions
4431793

4656876
NATURAL POTIONS
FOR YOUR EMOTIONS
Body lotion; Body wash;
Lip balm

After shave lotions; Bath
gels; Bath oils; Bath
salts; Body powder; Body
sprays; Cosmetic
sunscreen preparations;
Deodorant for personal
use; Face powder; Facial
beauty masks; Facial
cleansers; Facial creams;
Facial lotion; Facial
scrubs; Hair
conditioners; Hand
creams; Hand scrubs;
Hand soaps; Make up
removing preparations;
Non-medicated douches;
Perfume oils; Perfumes
and toilet waters;
Perfuming sachets; Pet
care kits comprising
shampoo, conditioner,
body spray; Pet
fragrances; Shampoos;
Shaving creams; Shaving
lotions; Shower and bath
gel; Skin care
preparations, namely,
skin peels; Skin masks;
Skin toners; Talcum
powders; all of the
foregoing made primarily
with natural ingredients
4795704 CASSANDRA’S HAIR
POTION (HAIR POTION
disclaimed)
Hair conditions; hair
oils; hair moisturizers
Opposition No. 91221520
- 22 -

4655143 LOTIONS & POTIONS
(LOTIONS disclaimed)
Full line of skin care
products, namely, skin
cleansers, toners, and
moisturizers; facial
treatments, namely,
exfoliators, scrubs,
masques, skin powders,
and skin lightening
preparations; full line of
skin firming products,
namely, non-medicated
skin serums and creams;
full line of body care,
namely, shower gels, bath
gels, bath bubbles,
mineral salts in the
nature of bath salts not
for medical purposes,
body exfoliators, bath oils
and hand creams; full
line of hair care products,
namely, shampoos, hair
conditioners and oil
treatments; full line of
massage care products,
namely, oils and creams;
full line of shaving care
products, namely,
cologne, after shave balm
and shaving gel; full line
of color cosmetic
products, namely, lip
gloss, lipsticks, mascaras,
blush, eye shadows, eye
liners, rouge, foundations
and face powders; full
line of perfume products,
namely, fragrances,
essential oils, room spray,
oils, potpourri, incense,
incense oils, linen sprays,
body mists, hydrating
body sprays, colognes,
essential oils and
Opposition No. 91221520
- 23 -

massage oils
4771494 SCENTED POTIONS
(and design) (SCENTED
disclaimed)
Age retardant lotion;
Aromatic body care
products, namely, body
lotion, shower gel, cuticle
cream, shampoo,
conditioner, non-
medicated lip balm, soap,
body polish, body and foot
scrub and non-medicated
foot cream; Bathing
lotions; Colognes,
perfumes and cosmetics;
Cosmetic preparations,
namely, firming lotions;
Cosmetic sun milk
lotions; Cosmetic suntan
lotions; Eau de perfume;
Essential oils as perfume
for laundry purposes;
Essential oils for
aromatherapy use; Eye
lotions; Face and body
lotions; Facial beauty
masks; Facial cleansers;
Facial emulsions; Facial
lotion; Facial
moisturizers; Facial
washes; Hair lotions;
Hand lotions; Liquid
perfumes; Lotions for
cellulite reduction;
Lotions for face and body
care; Massage lotions;
Oils for perfumes and
scents; Perfume oils;
Perfumed creams;
Perfumes; Perfumes in
solid form; Skin lotion;
Skin lotions; Styling
lotions; Sun care lotions;
Sun-block lotions; Teeth
cleaning lotions; Toning
lotion, for the face, body
Opposition No. 91221520
- 24 -

Within this hair care group only two begin with the word POTION (POTION OF
THE TROPICS and design, and POTION DROPS) and none are for a combination
of POTION plus a number. Only one third-party example exists in the record that
incorporates Applicant’s POTION 9 mark: LOVE POTION # 9 for perfume,
referring to the well-known song for different goods.
Even without specifics regarding the extent of sales or promotional efforts
surrounding the third-party marks, third-party registrations coupled with evidence
of third-party use in the form of web pages may be sufficient to show weakness of a
mark where a considerable number of third parties use similar marks in connection
with similar goods or services. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674-1675 (Fed. Cir. 2015). See also Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (cert. denied January 25,
2016). This combination of third-party registrations and third-party uses may be
“powerful on its face” and must be considered when assessing the strength of
plaintiff’s mark. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d at 1674-75.
Here, none of the registrations appear to coincide with the examples of use. In
addition, there are no examples of the structure POTION plus a number for hair
and hands
4819272 POTION DROPS
(DROPS disclaimed)
Organic oils, oil extracts
and conventional oils all
for cosmetic purposes,
hair oils, face oils, body
oils
Opposition No. 91221520
- 25 -

care. Applicant’s reliance on the web page example with SEVEN POTIONS for
beard oil (“Seven Potions – Best Beard Oil & Leave-in Conditioner 1fl oz. Scented
Beard Softener. Stops Beard Itch. Natural, Organic”)18 is not particularly probative,
as such goods are different from the hair care products in issue, the mark does not
begin with the word POTION, as Opposer’s does, suggesting a progressive
numerical line of POTION hair care products, and it displays the number in word
form. This record does not reveal “extensive evidence of third-party use and
registrations” in connection with hair care products and in particular “Hair care
preparations; hair conditioner” “shampoo” or “Hair care preparations, namely,
conditioner and hair styling preparations.” Jack Wolfskin v. New Millennium, 116
USPQ2d at 1136 (Court noted fourteen examples of use and registration).
The probative evidentiary value of the third-party registrations alone is in
showing the sense in which the term POTION is used and understood. Id. at 1675;
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) (third-
party registrations “may be given some weight to show the meaning of a mark in
the same way that dictionaries are used”). Such registrations are not evidence that
the marks therein are in use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ 462, 463
(CCPA 1973); AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973). As discussed above, the term POTION has some

18 21 TTABVUE 64.
Opposition No. 91221520
- 26 -

suggestiveness evoking the meaning of a mixture in relation to hair care products.
The relevant third-party registrations serve to corroborate this.
As to the question of the effect of the third-party use examples on consumer
perception, the term POTION is somewhat weak and diluted for hair care products;
however, the evidence does not support the contention that the combination of the
word POTION followed by a number is weak as used with hair care products. In
addition, Opposer has shown its mark POTION 9 has achieved commercial
strength.
Recognizing the somewhat diluted nature of POTION in the hair care industry,
even if we were to consider it highly diluted, marks containing the word POTION
would still be barred where “the resemblance to [Opposer’s mark] is striking enough
to cause one seeing it to assume that there is some connection, association or
sponsorship between the two.” Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza
Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed.
Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).
Viewing the marks as a whole, we find the similarities “striking enough” such
that Applicant’s use of POTION 10 at the beginning of its mark falls within the
scope of protection of Opposer’s commercially strong mark.
Actual Confusion
Although the applications are based on intent to use, Applicant argues that “the
parties’ marks have been able to peacefully coexist for approximately 2 years
Opposition No. 91221520
- 27 -

without a single instance of actual confusion.” 28 TTABVUE 20. Applicant bases
this argument on Ms. Aronson’s following statement:
12. It’s a 10 has used both POTION 10 MIRACLE
REPAIR SHAMPOO and POTION 10 MIRACLE REPAIR
CONDITIONER in connection with its hair care line since
at least as early as June of 2015. The parties’ respective
products have been able to peacefully coexist during this
time. It’s a 10 has not heard of one instance where a
consumer believed It’s a 10 was in any way affiliated with
Wella or the POTION 9 mark.
16 TTABVUE 4.
“A showing of actual confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite is not necessarily true,
however. The lack of evidence of actual confusion carries little weight.” Majestic,
65 USPQ2d at 1205, (citing J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960,
964, 144 USPQ 435, 438 (CCPA 1965)). See also Herbko Int’l, Inc. Kappa Books,
Inc., 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (showing of actual confusion not
necessary to establish a likelihood of confusion).
Ms. Aronson’s statement asserting use of the applied-for marks is not
corroborated by documentary evidence and is inconsistent with the Section 1(b)
filing basis. Other statements in the declaration, regarding marketing expenditures
and advertising, are not for the specific marks but rather for Applicant’s entire line
of It’s a 10 products. Moreover, the general statements of use do not include
examples of actual meaningful opportunities for confusion to occur (e.g., the
products were actually offered in the same store). The question of actual confusion
does not benefit from the presumption accorded to the identification of goods in
Opposition No. 91221520
- 28 -

determining the scope of the trade channels. Finally, two years does not constitute a
significant amount of time of overlapping use.
We find this factor to be neutral.
Balancing the Factors
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The goods at
issue are identical or legally identical and it is presumed that they travel through
the same channels of trade to the same classes of customers. The type of goods are
general consumer items not subject to a heightened care in purchasing or requiring
a higher level of purchaser sophistication. The marks are partly similar in
appearance, sound, and connotation in that they both begin with POTION + a
number. This identical structure creates a similar overall commercial impression.
Although the term POTION is somewhat conceptually weak in the field of hair care
products, the structure of POTION plus a number at the beginning of a mark is not,
and Opposer’s mark has gained commercial strength, which entitles it to a scope of
protection sufficiently broad to encompass the level of similarity reflected in
Applicant’s marks.19
Decision: The opposition is sustained.

19 In view of our determination on the Section 2(d) claim, we do not reach the claim of
dilution under Section 43(c).