Townsend Enterprises, Inc.v.Creative Resources, LLC

Trademark Trial and Appeal Board

Feb 19, 2008

No. 91169559 (T.T.A.B. Feb. 19, 2008)

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB Mailed: February 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Townsend Enterprises, Inc.

v.

Creative Resources, LLC
_______

Opposition No. 91169559
to Application No. 78502047
filed on October 19, 2004

Opposition No. 91169560
to Application No. 78525940
filed on December 2, 2004
_______

Susan Freya Olive, Olive & Olive, PA for opposer.

Paul F. Kilmer, Holland and Knight, for applicant.
_______

Before Grendel, Kuhlke, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the marks BETTER SEX1
and BETTER SEX........NAKED2 (both in standard characters)
for “prophylactics, namely condoms” in International Class
10. Townsend Enterprises opposed registration of both
applications, arguing that use of the opposed marks on the
identified goods would be likely to cause confusion in view

1 Filed December 2, 2004, alleging a bona fide intent to use the
mark in commerce.
Opposition No. 91169659
Opposition NO. 91169560

2
of its prior use and registration of similar marks for
related goods. Trademark Act § 2(d); 15 U.S.C. § 1052(d).
Because the above-captioned oppositions involve the same
parties, similar marks, and virtually identical issues, we
decide both oppositions in this single opinion, taking
account of the differences between the two proceedings as
appropriate.3
Opposer filed a notice of reliance and submitted a
brief. Applicant submitted neither evidence nor a brief.
We sustain the oppositions.
I. Record
The record consists of the pleadings and the following
evidence submitted with opposer’s notice of reliance.
• Opposer’s unanswered requests for admission, served
September 20, 2006, in both oppositions;

• Status and title copies, prepared by the USPTO,
indicating current validity and opposer’s ownership of

o Registration No. 1641091 of the mark THE BETTER
SEX VIDEO SERIES (typed) for “pre-recorded video
tapes covering intimacy counseling of couples” in
International Class 9.4 (“‘091 Registration.”)

2 Filed October 19, 2004, alleging a bona fide intent to use the
mark in commerce.
3 Both oppositions were filed on the same day. It would have
been better practice for opposer to have filed them as one
proceeding. See TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP) § 305 (2d
ed. rev. 2004). Doing so would have avoided potential conflicts
in schedules and evidence, and would have avoided duplication of
effort by both the parties and the Board.
4 Issued April 16, 1991, alleging first use and use in commerce
as of November 13, 1989. Section 8, 9, and 15 filings accepted,
granted and acknowledged, respectively. Registrant disclaimed
the exclusive right to use “VIDEO SERIES” and “SEX” apart from
the mark as shown.
Opposition No. 91169659
Opposition NO. 91169560

3

o Registration No. 3107809 of the mark BETTER SEX
SYNERGY PLEASURE SYSTEM (standard characters) for
“Electric and non-electric massage apparatus,
vibrators, and instructional materials provided
therewith; kits and gift packages containing one
or more of electric and non-electric massage
apparatus and vibrators, together with
instructional materials and adult sexual aids for
use therewith” in International Class 10.5 (“‘809
Registration.”)

II. Pleadings
In its notices of opposition, opposer alleges its use
in commerce of marks including the words “BETTER SEX,”6 on
goods including “prophylactics, namely condoms,” and
“informational and instructional materials, educational
services, and entertainment products,” and that such use
predates the filing of the subject applications. Opposer
alleges that it also provides “a wide variety of products
for use with condoms in human sexual expression, ranging
from lotions and lubricants to vibrators, books, games, and
music.” Opposer further asserts ownership of the ‘091
Registration; that “[a]pplicant’s mark so resembles
opposer’s marks as to be likely to cause confusion...”; and
that registration of the opposed application “is likely to
interfere with Opposer’s use and exploitation of its own

5 Issued June 20, 2006, alleging first use and use in commerce as
of September 26, 2005.
6 BETTER SEX, BETTER SEX CONDOM SAMPLER, THE BETTER SEX VIDEO
SERIES, BETTER SEX VIDEO, BETTER SEX UNIVERSITY, and the domain
name www.bettersex.com.
Opposition No. 91169659
Opposition NO. 91169560

4
marks and is likely to diminish and dilute the goodwill
associated with Opposer’s ... marks.”
By its answers, applicant denied (or denied for lack of
knowledge) each of opposer’s allegations.
III. Preliminary Matters
First, to the extent opposer intended to allege that
registration of applicant’s mark would result in dilution7
pursuant to Trademark Act § 43(c), 15 U.S.C. § 1125, we find
that such allegation was not properly pleaded (opposer did
not allege that its mark was famous), nor was it tried.
Accordingly, we give the issue of dilution no further
consideration.
Second, the notice of opposition alleges opposer’s
ownership of the ‘091 Registration, but does not mention the
‘809 registration (or the then-pending application from
which it subsequently issued). Nonetheless, because opposer
filed a copy of this registration during its trial period
without objection from applicant, and opposer’s ownership
and the validity of both registrations was admitted by
applicant, we deem the issue of likelihood of confusion with
respect to the ‘809 Registration to have been tried by
consent, Fed. R. Civ. P. 15(b)(2), and deem the pleadings
amended accordingly.

7 “Registration and/or use of Applicant’s mark ... is likely to
... diminish and dilute the goodwill associated with Opposer’s
... marks....” Notice of Opp. ¶ 7.
Opposition No. 91169659
Opposition NO. 91169560

5
Finally, we note opposer’s argument in its brief that
it “has, in effect, established a family of BETTER SEX
marks.” Applicant’s Br. at 9. Like dilution, this issue
was neither pleaded nor tried. Although applicant has
established registration and use of the words “BETTER SEX”
as a component of several marks, it takes a good bit more to
establish a “family” of marks, see J&J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed.
Cir. 1991)(“Simply using a series of similar marks does not
of itself establish the existence of a family. There must
be a recognition among the purchasing public that the common
characteristic is indicative of a common origin of the
goods.”), and there was nothing in the notices of opposition
or opposer’s trial evidence which would have put applicant
on notice that this issue was being raised. As with
dilution, we give this matter no further consideration.
IV. Factual Findings
By its proper submission of status and title copies of
its registrations, opposer has established that such
registrations are currently subsisting and owned by opposer.
Trademark Rule 2.122(d)(2).
The matters set out in opposer’s requests for admission
are conclusively established by virtue of applicant’s
failure to respond to them. Fed. R. Civ. P. 36(a)(3),
Opposition No. 91169659
Opposition NO. 91169560

6
36(b). We find the following admissions8 particularly
relevant:
3. Opposer is the owner of Federal Registration
1,641,091 for THE BETTER SEX VIDEO SERIES,
registered in 1991.

4. Opposer is the owner of Federal Registration
3,107,809 for BETTER SEX SYNERGY PLEASURE SYSTEM.

5. The registrations cited in Request for Admission
numbers 3 and 4 above are presently subsisting and
are presumptively valid.

10. Opposer uses the mark BETTER SEX CONDOM SAMPLER in
connection with prophylactics, namely condoms.

11. Opposer uses the term BETTER SEX in connection
with a number of sexual health products, including
BETTER SEX GEL LUBRICANT, BETTER SEX MASSAGE OIL
and BETTER SEX POTIONS.

12. Opposer uses the mark THE BETTER SEX VIDEO SERIES
in connection with pre-recorded videotapes
concerning intimacy counseling of couples,
including human sexual relations.

13. Opposer uses the mark BETTER SEX UNIVERSITY in
connection with the provision of articles,
research, statistics, tips and the like regarding
intimacy and sexual health.

14. Opposer’s BETTER SEX VIDEO SERIES includes
instruction on condom use.

15. Condoms are typically used in regard to sexual
health, including the prevention of contraception
and the transmission of sexually transmitted
disease.

17. The thin, protective design of a condom is such to
emulate the feeling of nakedness.

8 Requests for admission served in Opp. No. 91169559. The
requests for admission in 91169560 are essentially the same, but
for the requests directed to the significance of the term
“naked.”
Opposition No. 91169659
Opposition NO. 91169560

7
18. Condoms are often marketed with emphasis on the
product’s ability to not interfere with the
feeling of nakedness.

19. Condoms are designed so that the individual wearing
it maintains a feeling of nakedness.

20. The term “naked” frequently is used in connection
with condoms.

25. Applicant’s goods bearing Applicant’s proposed
Mark would be sold through many of the same
channels of commerce as those through which
Opposer's goods bearing Opposer's Marks are sold.

26. The goods and/or services that Applicant seeks to
provide under Applicant’s Mark are substantially
similar to the goods and/or services provided by
Opposer under Opposer’s Marks.

27. Applicant’s proposed mark is substantially similar
to Opposer’s marks.

33. Opposer has been using the mark BETTER SEX in
commerce since long prior to October 19, 2004.

47. Applicant has not sold any goods under Applicant's
Mark.

V. Analysis
A. Standing and Priority
Opposer made its pleaded registrations of record, thus
establishing its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, priority is not an issue in
this case as to the marks and goods covered by them. King
Opposition No. 91169659
Opposition NO. 91169560

8
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). With respect to opposer’s asserted
common-law rights, applicant admits that opposer uses its
marks in commerce and has done so since prior to applicant’s
constructive use date, likewise establishing both standing
and priority.
B. Likelihood of Confusion
Our determination under Trademark Act § 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. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enter., Inc., 50 USPQ2d 1209 (TTAB 1999),
and cases cited therein.
Opposition No. 91169659
Opposition NO. 91169560

9
Applicant admitted that its marks are “substantially
similar to opposer’s marks.” Even in the absence of the
admission, we would find them similar in significant part
because of applicant’s appropriation of the dominant portion
of opposer’s marks. While we must consider the marks in
their entireties, most of opposer’s marks include the words
“BETTER SEX” plus descriptive wording, which is less likely
to create a strong commercial impression. See In re N.A.D.
Inc., 57 USPQ2d 1872, 1873 (TTAB 2000)(“These descriptive,
if not generic, words have little or no source-indicating
significance.”) Accordingly, we find that “BETTER SEX” is
the dominant portion of opposer’s marks, and that this term
is identical applicant’s BETTER SEX mark, and the dominant
portion9 of applicant’s BETTER SEX .........NAKED mark.
Likewise, applicant admitted that its identified goods
are “substantially similar” to the goods in connection with
which opposer uses its marks. Further, applicant has
admitted to opposer’s use of the mark BETTER SEX CONDOM
SAMPLER in connection with identical goods, and that the
videotapes sold under its registered mark, THE BETTER SEX
VIDEO SERIES, in fact include instruction on condom use,
which is clearly within the scope of the goods in the
registration. Applicant’s other registration, for BETTER

9 Applicant’s admissions also establish that “NAKED” is
suggestive of condoms, and therefore entitled to relatively less
weight in our analysis.
Opposition No. 91169659
Opposition NO. 91169560

10
SEX SYNERGY PLEASURE SYSTEM, covers goods including
massagers, vibrators, and adult sexual aids, all items which
can be used in conjunction with or at the same time as
condoms. Finally, applicant has again admitted to opposer’s
use of marks including “BETTER SEX” in connection with
“massage oil” and “sex gel lubricant,” which can also be
used with condoms.
Finally, applicant further admitted that the channels
of trade for the respective goods are identical or
overlapping, as both are sold through retail outlets and
over the Internet.
In sum, we find that opposer has made a prima facie
case under Trademark Act § 2(d), which applicant has not
rebutted. Thus, we conclude that the record supports a
finding of a likelihood of confusion as between applicant’s
BETTER SEX and BETTER SEX........NAKED MARKS and opposer’s
registered and previously-used trademarks.
Decision: The oppositions are sustained pursuant to
Trademark Act § 2(d).