Pramil S.R.L. (Esapharma)v.Mitchell Cosmetics SARL

Trademark Trial and Appeal Board

Jul 8, 2004

No. 91122317 (T.T.A.B. Jul. 8, 2004)

Hearing: Mailed:
April 6, 2004 July 8, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Pramil S.R.L. (Esapharma)
v.
Mitchell Cosmetics SARL
________
Opposition No. 91122317
against Application Serial No. 75803862
_______
Donald L. Dennison of Dennison Schultz & Dougherty for
Pramil S.R.L. (Esapharma).
David M. Rogero for Mitchell Cosmetics SARL.
_______
Before Simms, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Mitchell Cosmetics SARL (a corporation of Switzerland)
seeks registration on the Principal Register of the design
mark shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91122317
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for goods identified in the application as filed as follows:
“skin and body lotions, skin creams, skin
gels, skin powders, skin masks; skin soap;
perfume,” in International Class 3; and


“medicated skin care preparations,” in
International Class 5.1
Registration has been opposed by Pramil S.R.L.
(Esapharma) (a corporation of Italy), alleging that opposer
has continuously used the mark REGGE LEMON for a variety of
cosmetic products and has exported such products to the
United States since prior to any date which may be claimed
by applicant; and that applicant’s mark, when used in
connection with both classes of identified goods, so
resembles opposer’s previously used trademark as to be
likely to cause confusion, to cause mistake, or to deceive.
Applicant has denied all the salient allegations of the
notice of opposition.
Both parties have fully briefed the case and an oral
hearing was conducted before the Board. Applicant chose
not to make an appearance at the scheduled hearing.
1 Application Serial No. 76803862 was filed on September 20,
1999 alleging a bona fide intention to use the mark in commerce
in addition to claiming a basis for registration under Section
44(e) on the basis of a foreign registration of Switzerland. The
word “LEMON” has been disclaimed apart from the mark as shown.
Opposition No. 91122317
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The record consists of the pleadings; the file of the
opposed application; the testimony, with exhibits, of Jacob
Aini and of Michael Aini, both officers of I.C.E.,
opposer’s United States distributor.
Preliminarily, we note that applicant objects to a
number of opposer’s key exhibits on the basis that they
were not produced during discovery. In moving to strike
several key exhibits, applicant does not point to specific
interrogatories or document requests. However, applicant’s
counsel did timely object to the introduction of each of
these exhibits as reflected in the two trial transcripts of
record. As to opposer’s Exhibit 7 (an invoice documenting
opposer’s first shipment of REGGE LEMON gel into the United
States), opposer offered the following explanation for its
failure to make this available during discovery:
Q [Mr. Dennison]: Was there a time after
we received the original Discovery
Request that I asked you to make a
search for records of your company to
show the earliest inception?
A [Mr. Jacob Aini]: Yes.
Q: Did you send me a number of invoices?
A: Yes.
Q: Was this particular invoice [of April
20, 1997; Exhibit 7] in that original
shipment that you sent to me?
A: Correct, it was. No, this was done
later, this invoice. I don’t know if it
was the first one.
Opposition No. 91122317
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Q: Can you tell me the situation with
regard to the I.C.E. records within the
last few years?
A: Well, I.C.E. had a, what do you call it?
A robbery, a burglary, and a lot of the
papers got mixed up in the office, so
the records are a little bit mixed up,
because papers were thrown all over, but
they are in the office of I.C.E.
Q: So when I first asked you for a search
of the materials, you did not produce
this for me; is that correct?
A: No, the first time, no. This was the
second search.
Q: When did you discover this particular
document?
A: Recently.
Q: Within the last month or so?
A: Probably less than that even.
Q: In preparation for this deposition?
A: Exactly, so I come with the facts and
what have you on paper to testify.
Trial testimony deposition of Jacob Aini, pp. 29 – 31.
Opposer admits that several of its exhibits were not
produced during discovery as requested. Arguably their
appearance during the deposition of Jacob Aini resulted in
some degree of surprise to applicant at trial. However,
the record contains no copies of the discovery requests
applicant argues would have covered these exhibits, and
applicant’s counsel who was present at the testimony
deposition failed to cross-examine Mr. Aini about the
circumstances of the burglary, how the objected-to
documents were finally located prior to the witnesses’
testimony, etc. Accordingly, we overrule applicant’s
Opposition No. 91122317
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objection to various exhibits placed into the record by
opposer and we have considered them in arriving at our
decision herein.
We turn first to the issue of likelihood of confusion.
There is no question but that there is a likelihood of
confusion involved herein. In fact, the parties do not
argue otherwise. The marks are identical, down to the
stylization of the letters. The images below on the left
are taken from two of opposer’s packages while the image on
the right is applicant’s special form drawing herein2:
Furthermore, although the record contains no extensive
discussion of the goods, applicant’s goods are identified
as “skin and body lotions, skin creams, skin gels, skin
powders, skin masks, skin soap, perfume and medicated skin
2 Q: How does that [trademark used by Michell Cosmetics]
compare to the Pramil trademark, in your opinion?
A: Exactly the same, complete knock off.
[J. Aini, p. 41].
Opposition No. 91122317
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care preparations” and opposer has established use of its
mark on skin care gel and skin care cream. Thus, the goods
are identical or closely related. Hence, this case turns
on which party prevails on the dispute over priority.
Applicant took no testimony in this case and did not
submit any other documentary evidence during applicant’s
testimony period. The earliest date on which applicant is
entitled to rely is applicant’s September 20, 1999 filing
date of its application – its constructive use date.
Contrary to applicant’s contention in its brief,3 applicant
is not entitled to an earlier priority date based upon its
Swiss application. Applicant made no such claim in the
instant application and was not eligible for priority as
its application in the United States was not filed within
six months after the filing date of the foreign
application. 15 U.S.C. §1126(d)(1); 37 C.F.R.
§2.34(a)(4)(i).
In order to understand the chronology surrounding
opposer’s use of this mark, we rely primarily upon the
testimony of Jacob Aini. According to Mr. Aini’s
3 “Applicant seeks registration pursuant to 15 U.S.C.
§1126(e), based upon a registration of the mark in Switzerland
with an effective date of December 7, 1998.” Applicant’s brief,
p. 4.
Opposition No. 91122317
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testimony, based on his interaction with Jamaican customers
of his Homeboy’s Discount store in 1983, he conceived of
the idea of marketing a natural skin care product having a
trademark reminiscent of reggae music (J. Aini, p. 14,
Exhibit 2). In August 1984, he floated with potential
vendors a “test program” of a “REGGE LEMON” product (J.
Aini, pp. 14 – 15, Exhibit 3). Though still without a
manufacturer or product more than ten years later, Mr. Aini
paid $90 in October 1994 for the design of artwork for a
packaging label for “REGGE LEMON gel” (J. Aini, pp. 23 –
24, Exhibit 6). Then in late 1996, Mr. Aini traveled to
Italy and met with Roberto Sottocorno, opposer’s principal,
to discuss a skin gel product bearing the name REGGE LEMON.
Opposer is an Italian manufacturer of pharmaceutical
products and cosmetics including skin care products. While
the record does not disclose the nature of their
understandings as to opposer’s ownership of this mark, it
seems Mr. Aini was pleased that his idea resulted in Mr.
Sottocorno’s adoption and use of this mark on skin gel.
The first shipment of REGGE LEMON gel documented in this
record was made from opposer to its U.S. distributor,
I.C.E. International, via an invoice dated April 20, 1997
(J. Aini, pp. 27 – 29, Exhibit 7). This shipment involved
Opposition No. 91122317
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more than seventeen thousand tubes of gel at a cost to
I.C.E. of almost seventy thousand dollars. The testimony
and other evidence shows that these goods moved through
various wholesalers (e.g., I.C.E., I.B.E. and Mr. King) (J.
Aini, p. 37) to be sold at retail to the ultimate customers
continuously up through the time that the record in this
case closed, although the record shows no further shipments
of REGGE LEMON gel from opposer in Italy into the United
States prior to applicant’s constructive use date of
September 20, 1999.
We are convinced that the documents of April 1997
demonstrate the beginning of opposer’s “use in commerce”
with the United States of this mark. That is, combined
with the subsequent sales at retail, this shows the bona
fide use of a mark in the ordinary course of trade. 15
U.S.C. §1127. Accordingly, based on this entire record, we
find that opposer has shown by a preponderance of the
evidence that it has a priority of use in the United
States.
Decision: The opposition is sustained on the ground
of likelihood of confusion and registration to applicant is
hereby refused as to both classes of goods.