Winmark Concepts, Inc.v.Aesthetic Resources, Inc.

Trademark Trial and Appeal Board

Mar 24, 2004

No. 91115343 (T.T.A.B. Mar. 24, 2004)

Mailed: March 24, 2004
Paper No. 18
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Winmark Concepts, Inc.
v.
Aesthetic Resources, Inc.
_____
Opposition No. 91115343
to application Serial No. 75551555
filed on September 10, 1998
_____
Anthony R. Masiello of Holland & Knight for Winmark
Concepts, Inc.
Aesthetic Resources, Inc., pro se.
______
Before Hohein, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Aesthetic
Resources, Inc. to register the mark E-MALE for “cosmetics
and skin care preparations, namely, cleansers, toners, skin
moisturizers, skin lotions for the face and body, body gels,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91115343
2
soaps for the hands, face and body, personal deodorants, and
body powders.”1
Registration has been opposed by Winmark Concepts, Inc.
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with the
identified goods, so resembles opposer’s previously used and
registered mark E-MALE for “promoting the goods and services
of others directed to male consumers through a global
consumer network,”2 as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations of the opposition.
Before turning to the merits of this case, we must
first address two evidentiary matters. The first concerns
the declaration of opposer’s president Andrew A. Isen
submitted under notice of reliance. This declaration was
previously submitted by opposer in support of its summary
judgment motion. Evidence submitted in connection with a
summary judgment motion does not form part of the
evidentiary record to be considered at final hearing.
Moreover, a party generally may not submit testimony by way
of affidavit or declaration unless the adverse party has
1 Serial No. 75551555, filed September 10, 1998, which alleges a
date of first use anywhere and a date of first use in commerce on
February 13, 1998.
2 Registration No. 2,007,197, issued October 8, 1996; Section 8
affidavit accepted.
Opposition No. 91115343
3
stipulated thereto. Trademark Rule 2.123. Applicant,
however, has not objected to the declaration. Further, in
its brief on the case, applicant lists opposer’s notice of
reliance as being part of the record in this case. We
therefore consider applicant to have stipulated to the
declaration and we will treat it as properly of record.
The second matter concerns applicant’s notice of
reliance which consists solely of Internet printouts.
Opposer has objected to the Internet printouts on the ground
that an Internet printout does not qualify as a printed
publication under Trademark Rule 2.122(e). Opposer’s
objection is well taken and thus we have not considered
these printouts in reaching our decision. See Raccioppi v.
Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).
The record, therefore, consists of the pleadings; the
file of the opposed application; and opposer’s notice of
reliance on a certified copy of its pleaded registration,
excerpts from publications, and the declaration of opposer’s
president Andrew A. Isen. Applicant did not take testimony
or properly offer any other evidence.3 Both parties filed
briefs on the case, but an oral hearing was not requested.
3 We note that in an order mailed April 3, 2002, the Board
granted opposer’s motion to strike the exhibits accompanying
applicant’s brief, and thus such materials do not form part of
the record herein.
Opposition No. 91115343
4
Our determination of likelihood of confusion under
Section 2(d) must be 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). Given the sparse record in the present case, there
are only two relevant factors to be considered, namely the
similarities/dissimilarities between the marks and the
goods/services.
Opposer’s president, Andrew A. Isen, states in his
declaration that opposer is a marketing company with a wide
variety of clients, including companies for whom opposer
markets skin care preparations and cosmetics. Mr. Isen
states that opposer first used the E-MALE mark in connection
with the marketing of men’s cosmetics and skin care
preparations in an e-mail broadcast on March 23, 1995.
Submitted with opposer’s notice of reliance are
advertisements taken from magazines which feature various
men’s cosmetics and skin care preparations. Each of the
advertisements includes the company or product’s Internet
address. For example, there is a full-page advertisement
for “Tommy” cologne and the Internet address “tommy.com”
appears thereon; and a full-page advertisement for “Nivea
For Men” for exfoliating face scrub and the Internet address
www.nivea.com appears thereon.
Opposition No. 91115343
5
Because applicant failed to take testimony or properly
offer any other evidence, we have no information about
applicant.
Priority of use is not in issue in view of the
certified copy of opposer’s pleaded registration submitted
by notice of reliance, which shows that such registration is
subsisting and owned by opposer. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Regarding the similarities in the marks, it is obvious
that they are identical. Both parties’ marks are for the
identical term, E-MALE, in typed drawing form.
We now consider whether the goods and services of the
parties are related. It is not necessary that the goods
and/or services be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
sufficient that the goods/services are related in some
manner, or that the circumstances surrounding their
marketing are such, that they would be likely to be
encountered by the same persons in situations that would
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 source or that there is an
association or connection between the sources of the
respective goods/services. See In re Melville Corp., 18
Opposition No. 91115343
6
USPQ2d 1386 (TTAB 1991); In re Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
It is opposer’s position that its services and
applicant’s goods are related because “[o]pposer’s
registration encompasses advertising and marketing for goods
of the type identified in the Application.” (Brief, p. 9).
Further, opposer argues that cosmetics and skin care
companies who market their products over the Internet
commonly include their Internet addresses in their print
advertisements. According to opposer, these companies’
trademarks and web site addresses are generally very similar
and therefore “a consumer who sees skin care products
marketed on Opposer’s website in connection with the mark E-
MALE, and who is later confronted with skin care products
marketed with the trademark E-MALE, would readily believe
that there is a connection between the product and web
site.” (Brief, p. 12). Opposer argues that the present case
is virtually identical to CPC International Inc. v. Skippy
Inc., 3 USPQ2 1456 (TTAB 1987), which involved use of the
identical mark SKIPPY for peanut butter and the services of
promoting the goods and services of others by rendering
assistance in devising advertising and merchandising
programs.
Applicant, on the other hand, argues that opposer
should not prevail herein because opposer is not involved in
Opposition No. 91115343
7
promoting goods or services which bear the mark E-MALE and
because there is no evidence that applicant markets its
cosmetics and skin care preparations over the Internet.
After careful consideration of the parties’ arguments
and the record in this case, we find that notwithstanding
the identity of the marks, opposer has not established that
its services and applicant’s goods are sufficiently related
that confusion is likely.
There are specific differences between opposer’s
services of “promoting the goods and services of others
directed to male consumers through a global consumer
network” and applicant’s “cosmetics and skin care
preparations, namely cleansers, toners, skin moisturizers,
skin lotions for the face and body, body gels, soaps for the
hands, face and body, personal deodorants, and body powder.”
In particular, opposer’s services, as identified, involve
activities designed to promote the goods and services of
others. Applicant’s goods, as identified, obviously do not
involve promoting the goods and services of others, but
instead are simply cosmetics and skin care preparations. We
recognize that opposer’s recitation of services is broadly
stated such that it may encompass the promotion of men’s
cosmetics and skin care preparations, and that applicant’s
identification of goods is broadly stated such that it may
encompass men’s cosmetics and skin care preparations. This,
Opposition No. 91115343
8
however, does not mean that opposer’s services and
applicant’s goods are related.
Applicant argues that there is no evidence that its
goods are marketed on the Internet. In the absence of any
limitations with regard to channels of trade in applicant’s
application, we must presume that applicant’s cosmetics and
skin care preparations move in all channels of trade normal
for such goods. Thus, for purposes of our likelihood of
confusion analysis, we must assume that applicant’s
cosmetics and skin care preparations are marketed over the
Internet. Nonetheless, this fact does not establish that
applicant’s goods are related to opposer’s services which
involve the promotion of the goods of services of others on
the Internet.
Further, it appears that opposer’s services and
applicant’s goods would be offered to different classes of
purchasers. There is no question that applicant’s cosmetics
and skin care preparations are the types of goods that are
purchased by ordinary consumers. However, opposer’s
promotional services are not of a type that would be
purchased by ordinary consumers, but rather by owners of
companies who sell goods and services directed to male
consumers. There is a very remote possibility that some
customer somewhere may be confused, but based on the meager
record before us, that situation amounts to only a
Opposition No. 91115343
9
speculative, theoretical possibility. Witco Chemical Co. v.
Whitefield Chemical Co., 419 F.2d 1403, 1405, 164 USPQ 43
(CCPA 1969). This de minimis situation does not warrant a
finding of likelihood of confusion, notwithstanding the
identity of the marks.
We recognize that in CPC International Inc. v. Skippy
Inc. the Board found that contemporaneous use of the mark
SKIPPY for peanut butter and promoting the goods and
services of others was likely to cause confusion.
However, there were two factors present in that case which
are not present here. The fame of the opposer’s SKIPPY mark
was a significant likelihood of confusion factor in that
case and there was evidence that the opposer had licensed
use of the SKIPPY mark for use on various products.
In sum, we find that notwithstanding the identity of
the marks, there is no likelihood of confusion in this case
because opposer’s services and applicant’s goods are
specifically different and not related.
Decision: The opposition is dismissed.