Victoria's Secret Stores Brand Management, Inc.v.Yael Mamroud/ Cummins

Trademark Trial and Appeal Board

Oct 10, 2014

No. 91201001re (T.T.A.B. Oct. 10, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Victoria's Secret Stores Brand Management, Inc. v. Yael Mamroud/Cummins
_____

Opposition No. 91201001
_____

Request for Reconsideration

_____

Kevin C. Parks and Michelle L. Zimmermann of Leydig Voit & Mayer Ltd.
for Victoria's Secret Stores Brand Management, Inc.
Yael Mamroud/Cummins, pro se.

_____

Before Kuhlke, Lykos and Gorowitz,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
This case now comes before the Board for consideration of Yael
Mamroud/Cummins’ (“Applicant”) timely filed request for reconsideration of the
Board’s August 7, 2014 decision. Victoria’s Secret Stores Brand Management, Inc.
(“Opposer”) has filed a brief in response thereto.
By way of background, on August 7, 2014, the Board sustained Opposer’s claim
of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §
Opposition N

1052(d)
stylized

for “Org
creams,
and skin
as well
applicat
register

1 Applica
U.S.C. §
o. 9120100
. Applicant
mark disp
anic hair c
hair gels,
moisturi
as owne
ions; how
ed mark

tion Serial
1051(b), alle
1
had filed
layed belo
are and sk
hair spray
zers” in In
rship of v
ever, the

No. 85007
ging a bon
an applica
w
in care pr
s, skin wa
ternationa
arious re
Board ch
380, filed p
a fide inten
- 2 -
tion to reg
oducts, na
ter toners
l Class 3.1
gistered V
ose to foc
ursuant to
t to use the
ister on th
mely, sham
, bath salt
Opposer
S and V
us its an
Section 1(b
mark in co
e Princip
poo, cond
s, face and
pleaded co
SX stylize
alysis on
) of the Tra
mmerce.
al Register
itioner, sty
body cre
mmon law
d marks
the follow
demark Ac
the
ling
ams,
use
and
ing
t, 15
Opposition No. 91201001
- 3 -

for “Personal care products, namely, body lotions; body mist; shower gel; eau de
parfum; scented body powder” in International Class 3 and “Clothing, namely, bras;
panties; pajamas; lingerie, robes; slippers” in International Class 25.2
The premise underlying a request for reconsideration of a Board decision in an
inter partes proceeding is that “based on the evidence of record and the prevailing
authorities, the Board erred in reaching the decision it issued. The request may not
be used to introduce additional evidence, nor should it be devoted simply to a
reargument of the points presented in the requesting party's brief on the case.
Rather, the request normally should be limited to a demonstration that, based on
the evidence properly of record and the applicable law, the Board's ruling is in error
and requires appropriate change.” Trademark Trial and Appeal Board Manual of
Procedure (“TBMP”) § 543 (2014), discussing the application of Trademark Rule
2.129(c); 37 C.F.R. § 2.129(c) (request for reconsideration of final decision in an inter
partes proceeding).
Applicant now requests reconsideration of the Board’s decision on the ground
that the Board improperly analyzed the first du Pont factor. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
Specifically, Applicant argues that the Board impermissibly dissected the marks
and predicted “a likelihood without evidentiary support that prospective consumers

2 Registration No. 4118910, issued March 27, 2012 from an application filed on April 20,
2009, alleging July 2, 2009 as the date of first use anywhere and October 1, 2009 as the
date of first use in commerce for the goods identified in International Class 3 and October 1,
2009 as the date of first use anywhere and in commerce for the goods identified in
International Class 25. The description of the mark is as follows: “The mark consists of
STYLIZED "VS" LOGO.” Color is not claimed as a feature of the mark.
Opposition No. 91201001
- 4 -

will overlook the ampersand” in Applicant’s mark. Request for Reconsideration, p.
3. Applicant also contends that the Board “falsely accused” Applicant of arguing
that the addition of the ampersand in Applicant’s mark changes the sound,
appearance, connotation and overall commercial impression to “vee and ess” so as to
avoid a likelihood of confusion when Applicant in fact only argued that the
ampersand changed the mark in its sound alone.
We find no error in the Board’s determination. Indeed, to the contrary, the
Board’s determination that consumers are likely to confuse the marks was
supported by the record evidence. As stated in the opinion:
…[G]iven the relatively small size of the ampersand in relation to the
letters “V” and “S,” it more likely that prospective consumers encountering
Applicant’s stylized mark will overlook the ampersand, and perceive and
pronounce the mark as the acronym “VS” as opposed to “V and S.” Indeed,
we find persuasive Opposer’s testimony that “[t]he ampersand in the
middle looks like an afterthought.” Crispi Deposition 41:18-19. We
therefore find that because the individual letters “V” “S” are the dominant
feature of Applicant’s mark, the involved marks are far more similar than
dissimilar in sound, appearance, connotation and commercial impression.

Final Decision, p. 15. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1907
(Fed. Cir. 2012) (the question of similarity between two marks is a factual
determination). Even if Applicant only argued that the addition of the ampersand
altered only the sound of Applicant’s mark, it was proper for the Board to consider
the appearance, connotation and commercial impression of the mark.
Applicant also argues that the Board improperly analyzed the second and third
du Pont factors which pertain to a comparison of the goods and trade channels. In
its final decision, the Board found that
Opposition No. 91201001
- 5 -

[Applicant’s] application and Opposer’s pleaded Registration No. 4118910
involve goods that are legally identical, at least in part. This is because
Opposer’s broadly worded “skin moisturizers” identified in its pleaded
registration necessarily encompass Applicant’s more narrowly identified
“body lotions.

Final Decision, p. 11. Applicant correctly notes that the Board made a typographical
error in this sentence as well as on page 9 of the opinion in transposing Applicant’s
and Opposer’s goods. Nonetheless, the Board’s determination that Applicant’s and
Opposer’s goods are identical in part remains unchanged and is consistent with the
principles set forth in the analysis of the second and third du Pont factors. That is
to say, Applicant’s broadly worded “skin moisturizers” necessarily encompasses
Opposer’s more narrowly identified “body lotions.” Thus, the typographical errors in
the Board’s Final Decision are now deemed corrected.
Decision: The Board, not being persuaded of any error in the rendering of its
decision, hereby denies Applicant's request for reconsideration.