Ultratan Suntanning Centers, Inc.v.Ultra Tan Int'l. AB

Trademark Trial and Appeal Board

Nov 12, 1998

No. 91100319 (T.T.A.B. Nov. 12, 1998)

Paper No. 20
BAC
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF THE TTAB NOV. 12, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Ultratan Suntanning Centers, Inc.
v.
Ultra Tan International AB
_____
Opposition No. 100,319
to application Serial No. 73/665,612
filed on June 9, 1987
_____
Charles Baxley of Loveman & Baxley for Ultratan Suntanning
Centers, Inc.
Robert Patch of Young & Thompson for Ultra Tan International
AB
______
Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Ultra Tan International AB has applied to register the
mark shown below for “ultra-violet lamp assemblies and
Opposition No. 100319
2
platforms and canopies equipped with ultra-violet lamps used
in tanning the person, and sun lamps” (Int. Class 11).1
The application was filed on June 9, 1987, under Section
44(d) of the Trademark Act, with a claim of priority based
on Swedish application No. 85-9845, filed December 18, 1986.
(Applicant’s Swedish application issued as Swedish
Registration No. 249 046 on May 14, 1993).
As grounds for opposition, opposer has alleged that it
is in the business of “operating tanning salons as well as
marketing, leasing, selling and dealing otherwise in
ultraviolet lamp assemblies for tanning of the person and
suntanning preparations being cosmetic or non-medicated
toilet preparations” under the mark ULTRATAN; that opposer
and its predecessors-in-interest have continuously used the
mark ULTRATAN in commerce since 1971 for suntanning
preparations, since 1985 for tanning salons, and since 1987
for ultraviolet lamp assemblies; that opposer has “sold,

1 Appl. Ser. No. 73/665,612, filed June 9, 1987. The application
includes a disclaimer of the word “tan”. The application was
originally filed with goods in Int. Classes 3, 10, and 11. This
opposition was filed against all three classes. On June 5, 1996
applicant filed an abandonment with prejudice of the goods in
Classes 3 and 10, with opposer’s written consent; and on July 29,
1996 the Board held that applicant’s Classes 3 and 10 were
abandoned with prejudice, and the opposition was dismissed
Opposition No. 100319
3
advertised and promoted Opposer’s Goods and Services in
interstate commerce under its ULTRATAN mark continuously
from at least as early as 1971”; that opposer owns
Registration No. 1,678,888 for the mark shown below for
“tanning salons”2, and application Serial Nos. 74/311,4703
and 74/622,7434; and that applicant’s mark, when used on its
goods, so resembles opposer’s previously used and registered
mark, as to be likely to cause confusion, mistake, or
deception.5

without prejudice as to those two classes. The decision herein
relates only to Class 11.
2 Reg. No. 1,678,888, issued March 10, 1992, Section 8 affidavit
accepted, Section 15 affidavit received. The claimed dates of
first use and first use in commerce are April 1, 1985 and May 1,
1985, respectively. The registration includes a statement that
the lining shown in the drawing is a feature of the mark, and
does not indicate color.
3 Ser. No. 74/311,470, filed September 8, 1992, for the mark
ULTRATAN for “sun tanning machines”, claiming dates of first use
and first use in commerce of December 3, 1987 and January 20,
1988, respectively. Action on this application has been
suspended by the Examining Attorney.
4 Ser. No. 74/622,743, filed January 17, 1995, for the mark
ULTRATAN for “sun-tanning preparations, namely, suntan oils,
creams, lotions and gels, and skin moisturizers, creams and
lotions”, claiming dates of first use and first use in commerce
of March 11, 1954 and September 24, 1971, respectively. Action
on this application has been suspended by the Examining Attorney.
5 Opposer also alleged that applicant’s mark falsely suggests a
connection with opposer; and that applicant’s goods as identified
in the U.S. application exceed the scope of the goods identified
in applicant’s Swedish Registration No. 249 046. Neither of
these issues was tried or briefed by the parties. The Board will
not further consider these grounds.
Opposition No. 100319
4
In its answer applicant has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; opposer’s testimony, with exhibits, of
Robert A. Siegler; and opposer’s notices of reliance on (i)
applicant’s answers to opposer’s first set of
interrogatories, and (ii) a status and title copy of
opposer’s Registration No. 1,678,888 prepared by the Patent
and Trademark Office.6
Both parties filed briefs on the case7. Neither party
requested an oral hearing.
Opposer’s testimony establishes that opposer opened its
first tanning salon in Manhasset, New York in 1985; that
opposer incorporated in May or June 1986; that opposer

6 Opposer’s pleaded Registration No. 1,678,888 issued on March
10, 1992. The status and title copy of opposer’s registration
submitted with the notice of reliance was prepared by the Patent
and Trademark Office in December 1995, and thus, does not include
information as to the Section 8 affidavit, which was due on March
10, 1998. The records of this Office indicate that opposer
timely filed a combined Section 8 and 15 affidavit, and that said
combined affidavit was accepted by the Office.
When a registration owned by a party has been properly made of
record in an inter partes case, and there are changes in the
status of the registration between the time it was made of record
and the time the case is decided, the Board will take judicial
notice of, and rely upon, the current status of the registration
as shown by the records of the Patent and Trademark Office. See
TBMP §703.02(a), at page 700-10, and the cases cited therein.
The Board hereby takes judicial notice of the current status of
opposer’s pleaded registration.
7 Applicant has submitted no evidence on its behalf in this case,
and applicant did not attend opposer’s deposition of Mr. Siegler.
Opposition No. 100319
5
opened two more tanning salons in 1986, and in 1987
purchased one more salon and opened two more; and that
opposer currently operates or licenses six tanning salons in
New York State under the mark ULTRATAN and design. Opposer
purchased Golden West Company, a manufacturer of ultra-
violet sunbeds and sun lamps in 1988. Golden West first
used the mark ULTRATAN for such goods in 1987. Opposer
sells suntanning beds and suntanning preparations
nationwide. The general price range of opposer’s suntanning
beds is from approximately $5,000 to $35,000 per bed; the
tanning lamps sell for approximately $100 to $150 per lamp;
and the suntanning lotions range from approximately $12 to
$15 per bottle. Opposer advertises its suntanning beds and
sun lamps in national trade magazines such as Looking Fit
and Tanning Trends; and opposer advertises its services (as
well as its goods) in local and national daily newspapers,
such as “Newsday” and “The New York Times.” Opposer also
provided evidence that applicant is seeking representatives
to market and sell applicant’s sunbeds and other products
under the mark ULTRA TAN to tanning salons, gym and fitness
centers, hair salons, cosmetic salons, and swimming halls
(Siegler, Dep. Ex. 23).
The question of priority does not arise against a
registered mark in an opposition proceeding. That is, prior
use need not be shown by an opposer relying on a
Opposition No. 100319
6
registration of its pleaded mark for its pleaded goods or
services unless the applicant counterclaims for
cancellation. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974);
Massey Junior College, Inc. v. Fashion Institute of
Technology, 492 F.2d 1399, 181 USPQ 272, footnote 6 (CCPA
1972); and David Crystal, Inc. v. Shelburne Shirt Co., Inc.,
465 F.2d 926, 175 USPQ 112 (CCPA 1972). In view of
opposer’s ownership of a valid and subsisting registration
for the mark ULTRA TAN and design for “tanning salons”, the
issue of priority with respect to tanning salons does not
arise herein.8
Besides opposer’s registration for tanning salon
services, opposer has asserted it has prior use of its mark
on suntanning preparations, and ultraviolet tanning beds and
lamps. Opposer appears to believe that it can establish
priority if it can show use of its mark for the goods at
issue prior to the date applicant first used the mark in the
United States, which opposer has shown, in that applicant
has not yet used the mark in the United States. However,
because applicant’s application is based on a Section 44(d)

8 Applicant’s arguments regarding its priority based on the case
of SCM Corporation v. Langis Foods Ltd., 539 F.2d 196, 190 USPQ
288 (DC Cir. 1976), are misplaced. Applicant appears to believe
that because opposer did not prove use prior to applicant’s
Section 44(d) priority filing date, opposer cannot establish
priority. However, as explained above, priority does not arise
as an issue with regard to tanning salons in this case due to
Opposition No. 100319
7
claim, applicant is entitled to rely on the filing date of
its Swedish application, which is December 18, 1986.
Opposer’s evidence does not establish opposer’s use of its
mark on ultraviolet tanning beds and lamps, or on suntanning
preparations, from a date prior to December 18, 1986.
We turn to a determination of the question of
likelihood of confusion. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). For the
reasons which follow, we hold that a likelihood of confusion
exists.
Regarding applicant’s involved goods and opposer’s
involved services, it is a general rule that goods or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather, it
is enough that goods or services are related in some manner
or that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of the goods or services. See In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited therein.

opposer’s unchallenged registration for its mark for such
services.
Opposition No. 100319
8
Moreover, it is well recognized that confusion in trade
can occur from the use of similar (or the same) marks for
products on the one hand and for services involving those
products on the other hand. See Safety-Klean Corporation v.
Dresser Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA
1975); and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433
(TTAB 1983), and cases cited therein.
Applicant has never disputed that there could be
customer overlap between opposer’s tanning salon services,
and applicant’s goods as listed in its application.
Moreover, a tanning salon owner or employee familiar with
opposer’s tanning salons operating under opposer’s ULTRATAN
mark, upon encountering ULTRATAN on sun lamps and ultra-
violet lamps, might well as a result be confused.
The parties’ marks include the identical word ULTRATAN,
the only spoken portion of the marks. Thus, the marks are
identical in sound and in connotation. The design features
of the parties’ marks are similar in that both employ a
round design suggesting a sun, with horizontal lines
therein. The word ULTRATAN and the similar design features
create a similar commercial impression, likely to be
remembered by purchasers. The differences in the design and
type style are not enough to distinguish the marks. That
is, the differences are not likely to be recalled by
purchasers seeing the marks at separate times. The emphasis
Opposition No. 100319
9
in determining likelihood of confusion is not on a side-by-
side comparison of the marks, but rather must be on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of the many
trademarks encountered; the purchaser’s fallibility of
memory over a period of time must also be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d
586, 177 USPQ 573 (CCPA 1973); In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467 (TTAB 1988); and Edison Brothers Stores
v. Brutting E.B. Sport-International, 230 USPQ 530 (TTAB
1986).
We acknowledge that the word ULTRATAN and the sun-like
designs in both marks are highly suggestive of opposer’s
services and applicant’s goods. Nevertheless, both marks
convey the same suggestive connotation; and there is no
evidence of any third parties using ULTRATAN marks.
Based on the similarity between the marks, and the
relationship of the parties’ respective goods and services,
we find that confusion is likely between applicant’s mark
and opposer’s mark, when these marks are used on the
respective goods and services of the parties.
Opposition No. 100319
10
Decision: The opposition is sustained, and
registration to applicant is refused.
E. J. Seeherman
E. W. Hanak
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board