Lancetti Cosmeticsv.Renee Beauty Salons, Inc.

Trademark Trial and Appeal Board

Aug 25, 2004

No. 92042416 (T.T.A.B. Aug. 25, 2004)

Zervas
Mailed: August 25, 2004
Cancellation No. 92042416
Lancetti Cosmetics d/b/a
Prestige Cosmetics
v.
Renee Beauty Salons, Inc.
Before Quinn, Walters and Drost, Administrative Trademark
Judges.
By the Board.
Lancetti Cosmetics d/b/a Prestige Cosmetics
(“petitioner”) has petitioned to cancel Registration No.
1,918,555 for the mark BEAUTY BAR for “beauty salon and
cosmetology services”1 owned by Renee Beauty Salons, Inc.
(“respondent”). Petitioner claims in its petition to cancel
that it filed a trademark application for BEAUTY BAR for
“color cosmetics, namely color kits consisting primarily of
articles of manufacture for home self-application of color
to face, eyes and lips”; that its application has been
1 Registration No. 1,918,555 issued on September 12, 1995 and
claims first use and first use in commerce on November 15, 1993.
A filing under Section 8 of the Trademark Act was accepted on
December 6, 2001.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3514
DISPOSITION IS NOT
CITABLE
AS PRECEDENT
OF THE TTAB
Cancellation No. 92042416
2
refused registration “as likely to cause confusion, or to
cause mistake, or to deceive, in view of Registration No.
1,918,555”; and that “registrant has abandoned [its] mark by
discontinuing use of [its] mark with no intent to resume …
use.”
On October 27, 2003, respondent filed an answer to the
petition to cancel which denies the salient allegations of
the petition to cancel.
This case now comes up on respondent's motion for
summary judgment (also filed October 27, 2003) on the
question of abandonment. Respondent's motion has been fully
briefed by the parties.
Respondent maintains that its mark is currently in use
and has been continuously used since 1993. As support for
its contention that it has been using the mark, it has
offered the declaration of Daniel Coniglio, Executive Vice
President of respondent, who states in paragraph 3 that the
mark BEAUTY BAR “has been in use in connection with ‘beauty
salon and cosmetology services’ since at least as early as
November 1993, and continues to be in use in interstate
commerce”; and that the photographs attached to his
declaration depict use of the mark. Respondent also
enclosed a copy of a report by Seymour Adler, a private
investigator hired by petitioner to investigate respondent's
use of its mark, which petitioner filed in connection with
Cancellation No. 92042416
3
the prosecution of petitioner's application. The report,
dated “Sept. 17 to Sept. 24, 2002,” states as follows:
Instructions were received from the client to
conduct an investigation pertaining to use of
Beauty Bar, by Renee Beauty Salons, Inc.,
Pottsville, PA., tel. 570-429-1684. Contacting
the above firm, I was able to speak with Claire,
who said that this was a beauty salon, that is
part of a thirty six chain. They have been in
business for about six years, and are a full
service salon.
Beauty Bar is only used as the name of the salon.
They do not have any products bearing the name
Beauty Bar.
According to respondent, “there is no evidence of
abandonment, nor can Petitioner assert or even suggest, that
Respondent's mark BEAUTY BAR has been abandoned and/or is
not in use”; and the cancellation should be dismissed.
Petitioner, in a two-page response, maintains as
follows:
[The] report of an industrial investigator
hired by petitioner … makes two statements:
First: Beauty Bar is only used as the name
of the salon; and
Second: They (Respondent's salons) do not
have any products bearing the name Beauty Bar.
Respondent argues that the First statement is
service mark use and Petitioner argues that it
unambiguously describes a trade name use.
As an exhibit hereto is the examining
attorney’s basis for refusal of Petitioner's
application which provides a synergistic reading
of said First and Second statements based on what
is know from common experience in the trade, that
“… it is in the normal course of business, that an
Cancellation No. 92042416
4
organization that provides beauty salon services
would also provide cosmetic items under the same
name.”
Petitioner concludes that “[o]n the record Respondent, which
may have used Beauty Bar as a service mark, is not doing so
currently, as reported by the industrial investigator, but
is using this designation only as a trade name.”2
In reply, respondent maintains that petitioner's
contention that BEAUTY BAR “is only being used as a trade
name is simply wrong”; and that respondent “is using its
mark BEAUTY BAR to identify its beauty salon and cosmetology
services by displaying the mark in promotional materials and
on the premises where such services are rendered.”
Respondent also contends that “it is not relevant in a
petition to cancel Respondent’s registration for services,
on grounds of non-use, whether or not Respondent is also
using the mark for related cosmetic products.”
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The purpose of
summary judgment is to avoid an unnecessary trial where
additional evidence would not reasonably be expected to
2 Petitioner has not provided any evidence supported by an
affidavit or declaration. See TBMP § 528.05 (2d ed. rev. 2004).
Cancellation No. 92042416
5
change the outcome. See Pure Gold, Inc. v. Syntex (U.S.A.),
Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).
Respondent, as the party moving for summary judgment, has
the burden of demonstrating the absence of any genuine issue
of material fact and that it is entitled to summary judgment
as a matter of law. See Celotex Corp. v. Catrett, 477 U.S.
317 (1986); and Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The
evidence must be viewed in a light most favorable to the
non-movant, and all justifiable inferences are to be drawn
in the non-movant's favor. See Lloyd's Food Products Inc.
v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993); and Opryland USA Inc. v. Great American Music Show
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
After carefully considering the evidence of record and
the arguments of the parties, we find that respondent is
entitled to summary judgment in this case.
We first note that “[i]t is well established … that the
name of a company or a salient feature of a trade name may
function both as a trade name and as a service mark.” In re
Amex Holding Corp., 163 USPQ 558 (TTAB 1969). The
determination of whether a term is used as a trade name and
a service mark must be made on the basis of the use of the
term on the evidence offered in support of service mark use
and the commercial impact of such use upon purchasers and
Cancellation No. 92042416
6
prospective customers as they encounter the services bearing
the term. If a company name, or a portion of that name, is
used in connection with the sale or advertising of services
so as to create a commercial impression separate from the
name, then this is evidence of probable service mark usage.
Ex Parte Little Studio, Inc., 111 USPQ 224 (Comm'r Pat.
1956).
We next turn to respondent's contention that it has not
abandoned the mark. Pursuant to Section 45 of the Trademark
Act, a mark is considered abandoned when its use has been
discontinued with an intent not to resume such use. In this
case, respondent has provided evidence of continuous use of
its mark in connection with “beauty salon and cosmetology
services” since November 1993. See Coniglio declaration,
paragraph 3. Respondent has also enclosed photographs
depicting the “present and open use” of BEAUTY BAR. The
photographs show use of BEAUTY BAR on a large sign above a
store entrance or on the store floor. Styling chairs, make-
up chairs, mirrors, styling products and “trappings that are
wholly consistent with beauty salon and cosmetology
services” are visible inside the store. One photograph
shows a store with a BEAUTY BAR sign that further states
“Your Complete Beauty Store and Full Service Salon.”
Additionally, respondent has provided a copy of two pages of
Cancellation No. 92042416
7
its web site.3 Under the caption “About Beauty Bar” on one
web page is the following wording:
Beauty Bar salons are contemporary salons offering
a wide range of services including the latest
cuts, color, perms, texturizing, styling and many
more. … In addition, we offer COMPLIMENTARY
consultations for all of our clients. (Emphasis
in the original.)
From the evidence presented to us, we find that respondent's
use of BEAUTY BAR creates the unambiguous commercial
impression that BEAUTY BAR is used as a service mark; that
this is or would be the general and likely impact of such
use upon the average person encountering the web site and
the stores depicted in the photographs under normal
circumstances and conditions; and that respondent has been
continuously using BEAUTY BAR in the sale and advertising of
respondent's “beauty salon and cosmetology services.”
Petitioner has argued that respondent does not use
BEAUTY BAR as a service mark because respondent does “not
have any products bearing the name Beauty Bar.” As support,
petitioner cites to one phrase in an Office Action issued in
the prosecution of petitioner's trademark application,
providing that “… it is in the normal course of business,
that an organization that provides beauty salon services
would also provide cosmetic items under the same name.”
3 The web page is not accompanied by a declaration or affidavit
of a person who can attest to its authenticity. See TBMP §
528.05(e) (2d ed. rev. 2004) and cases cited therein. However,
Cancellation No. 92042416
8
Petitioner's argument regarding trade name use is rejected.
Service mark rights are not premised on use of a term also
as a trademark; and “beauty salon and cosmetology services”
are not premised on concurrent sale of goods, e.g.,
“cosmetic items.” Additionally, petitioner's reliance on
the examining attorney’s statement is misplaced; the
sentence was made in the context of a likelihood of
confusion refusal and pertains to the possible relationship
between applicant's goods and the services in the cited
registration.4
In view of the foregoing, we conclude that respondent
has met its burden of establishing that there are no genuine
issues of material fact as to respondent's continuous use
since registration until the present of BEAUTY BAR as a
service mark for “beauty salon and cosmetology services,”
and that summary judgment is warranted in respondent’s
favor. Thus, respondent's motion for summary judgment is
granted, and the petition to cancel is denied with
prejudice.
-o0o-
because petitioner has not raised an objection, we have
considered the web page.
4 Furthermore, it does not appear that the examining attorney was
requiring beauty salon services to include the sale of cosmetics
under the same name. Instead, the examining attorney was simply
noting that this was a common feature of beauty salon services.