Arcona, Inc.v.Mood Menders, LLC AKA Mood Menders, To Go Spa

Trademark Trial and Appeal Board

May 5, 2014

No. 92055529 (T.T.A.B. May. 5, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Arcona, Inc.
v.
Mood Menders, LLC AKA Mood Menders, To Go Spa
_____

Cancellation No. 92055529
_____

R. Joseph Trojan, Trojan Law Office, for Arcona, Inc.

Mood Menders, LLC, pro se.1
_____

Before Cataldo, Adlin, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Arcona, Inc. (“petitioner”) petitions to cancel Registration No. 3679354 for the
mark EYEDEWS for skin care products in International Class 3, alleging likelihood
of confusion with petitioner’s mark EYE DEW. Respondent Mood Menders, LLC
AKA Mood Menders, To Go Spa (“respondent”) does not dispute petitioner’s prior
use of the EYE DEW mark, but argues in its brief that petitioner’s priority is

1 Mood Menders, LLC acted in this proceeding through its owner, president, and chief
executive officer, Jan Toohey. See Patent and Trademark Office Rule 11.14(e)(3), 37 C.F.R.
§ 11.14(e)(3); TBMP § 114.01.
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negated by its “infringement” of a registration previously owned by a third party,
now expired. Respondent also argues that petitioner’s mark lacks distinctiveness.
We grant the petition to cancel.
Record
The evidence of record automatically includes the pleadings and the file of
the registration that is the subject of the petition.
Petitioner apparently assumed that its pleaded application for the mark
EYE DEW also is automatically of record. It is not. See Trademark Trial and
Appeal Board Manual of Procedure (TBMP) § 704.03(b)(2) (3d ed. rev. 2 June 2013).
Moreover, the Board does not take judicial notice of applications or registrations;
they must be proven by competent evidence. See, e.g., In re Jonathan Drew Inc.,
97 USPQ2d 1640, 1644 n.11 (TTAB 2011) (stating that “the Board’s well-established
practice is not to take judicial notice of registrations that reside in the USPTO”);
Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986).
Respondent, however, made of record a TESS printout of petitioner’s pleaded
application.2 Therefore, petitioner’s pleaded application, but not its file history, is
part of the trial record.
The parties stipulated to submission of testimony by affidavit or declaration.3
Portions of the evidence have been designated confidential by the parties and
submitted under seal. We discuss that evidence only in general terms.

2 Serial No. 85601826, Testimonial Declaration of Jan Toohey, Exh. 11, 19 TTABVUE 80-
82.
3 See 9 TTABVUE; 17 TTABVUE (approving stipulation).
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A. Petitioner’s Evidence
Petitioner made the following evidence properly of record:
• Respondent’s amended4 and second amended5 responses to petitioner’s
first set of interrogatories;
• Excerpts from the discovery deposition of respondent pursuant to FED.
R. CIV. P. 30(b)(6), with exhibits;6 and
• The testimonial declaration of Mary McLemore (“McLemore Decl.”),
petitioner’s chief operating officer, with exhibits.7
B. Respondent’s Evidence
Respondent introduced the following evidence:
• Petitioner’s responses to respondent’s first set of interrogatories;8 and
• The testimonial declaration of Jan Toohey (“Toohey Decl.”),
respondent’s owner, president, and chief executive officer.9
Both parties attempted to introduce the other party’s responses to requests
for admission, all of which were denials.10 However, only admissions to requests for
admission may be made of record by notice of reliance. Trademark Rule
2.120(j)(3)(i); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957
(TTAB 2008); TBMP § 704.10. Thus, we have given these denials no consideration.

4 Petitioner’s First Notice of Reliance, Exh. 16, 10 TTABVUE 3-17.
5 Petitioner’s Fourth Notice of Reliance, Exh. 20, 13 TTABVUE 3-17.
6 Petitioner’s Second Notice of Reliance (non-confidential excerpts), Exh. 18, 11 TTABVUE
4-19; Petitioner’s Third Notice of Reliance (confidential), Exh. 19, 14 TTABVUE 3-55;
Petitioner’s Fifth Notice of Reliance (confidential), Exh. 5, 21 TTABVUE 3-19.
7 15-16 TTABVUE; see also Respondent’s First Notice of Reliance, Exh. 15, 18 TTABVUE
26-34 (McLemore Decl. without exhibits).
8 Respondent’s First Notice of Reliance, Exh. 13, 18 TTABVUE 3-16.
9 19 TTABVUE.
10 Petitioner’s First Notice of Reliance, Exh. 17, 10 TTABVUE 18-32; Registrant’s First
Notice of Reliance, Exh. 14, 18 TTABVUE 17-25.
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Scope of the Claims and Defenses
In their trial briefs, the parties argue unpleaded claims and defenses. First,
petitioner’s motion for leave to amend its pleading to add a claim of fraud – filed
concurrently with its opening brief – was denied by Board Order of January 28,
2014.11
Second, although petitioner asserts and attempted to plead a dilution claim,
petitioner’s claim is legally insufficient. Petitioner did not allege, and has not
attempted to prove, that its pleaded mark became famous before respondent’s first
use of the EYEDEWS mark.12 Therefore, petitioner failed to adequately plead or
prove a claim for dilution. See Citigroup Inc. v. Capital City Bank Group Inc., 94
USPQ2d 1645, 1666 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir.
2011); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001).
Finally, respondent argues that petitioner has unclean hands because it
infringed a third-party registration, which has expired. Respondent, however, did
not assert unclean hands (or any other any affirmative defense) in its answer. “[A]n
unpleaded defense cannot be relied upon by the defendant unless the defendant’s
pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or
15(b), to assert the matter.” TBMP §§ 311.02(c), 314. The reason for requiring an
affirmative defense to be pleaded is to give the plaintiff notice of the defense and an
opportunity to respond. Blonder-Tongue Labs., Inc. v. University of Illinois Found.,
402 U.S. 313, 169 USPQ 513, 527 (1971). We further note that respondent does not

11 32 TTABVUE.
12 See Petition at 3 ¶¶ 6-8.
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argue, nor does the record in this case support a finding, that petitioner was fairly
apprised that respondent would introduce evidence on this issue. Cf. Boise Cascade
Corp. v. Cascade Coach Co., 168 USPQ 795, 797 (TTAB 1970). Thus, the issue of
unclean hands was not tried by the express or implied consent of the parties.
Accordingly, respondent’s arguments and evidence on the issue of unclean hands
will be given no consideration.
The issues before us for decision are priority and likelihood of confusion.
Petitioner’s Standing
We first consider whether petitioner has standing to bring this proceeding.
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). “To establish a reasonable basis for a belief that one is damaged by the
registration sought to be cancelled, a petition may assert a likelihood of confusion
which is not wholly without merit . . . .” Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); see also Toufigh v. Persona
Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (finding standing in a
cancellation proceeding where petitioner holds “a reasonable belief that there is a
likelihood of confusion between the marks, or that the presence on the register of
the respondent’s mark may hinder the petitioner in using or registering [its] mark”).
Petitioner’s evidence of use of EYE DEW in connection with a skin care product,
discussed infra, establishes its standing to petition to cancel the involved
registration. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112,
1118 (TTAB 2009).
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Priority
To establish priority on a likelihood of confusion claim brought under Section
2(d), a party must prove that, vis-à-vis the other party, it owns “a mark or trade
name previously used in the United States . . . and not abandoned.” A party may
establish its own prior proprietary rights in a mark through an earlier constructive
filing date accorded to the party’s own registration or application, actual use, or use
analogous to trademark use. Giersch v. Scripps Network Inc., 90 USPQ2d 1020,
1022 (TTAB 2009). The testimony of a single witness may be sufficient to establish
priority when the testimony is proffered by a witness with knowledge of the facts
and the testimony is clear, convincing, consistent, and sufficiently circumstantial to
convince the Board of its probative value. See, e.g., Panda Travel Inc. v. Resort
Option Enters. Inc., 94 USPQ2d 1789, 1795 n.15 (TTAB 2009); Liqwacon Corp. v.
Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979).
Respondent filed the application that matured into Registration No. 3679354
on February 21, 2009, pursuant to Section 1(a) of the Trademark Act. Respondent
may rely on this filing date of the application as its constructive use priority date.
Central Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB
2013). However, there is record evidence that respondent first made common-law
use of the EYEDEWS mark in commerce on March 11, 2008.13 In order to establish
its priority, petitioner therefore must prove use of the EYE DEW mark before
March 11, 2008.

13 Petitioner’s Fourth Notice of Reliance, Exh. 20, Response to Interrogatory No. 3, 13
TTABVUE 7.
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Petitioner introduced testimonial and documentary evidence that it has used
the mark EYE DEW in commerce continuously for cosmetic and skin care products
since 1999.14 Based on this evidence, we find that petitioner has shown common-
law use of its mark in the United States in association with skin care products
before March 11, 2008 and therefore has priority over respondent.
Likelihood of Confusion
Section 14(1) of the Trademark Act provides that a cancellation action may be
brought on the ground of likelihood of confusion before a registration is five years
old. The petition before us was filed on April 23, 2012, within five years from the
date the subject registration issued on September 8, 2009.
Our determination under Trademark Act Section 2(d) is based on an analysis
of all probative facts in evidence that are relevant to the factors bearing on the issue
of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics
of the goods and differences in the marks.”).

14 McLemore Decl. ¶ 4 & Exhs. 2 (June 1999 price list), 3 (January 2001 price list), 4 (list of
sales 2002-2007), 15 (list of sales 2008-October 2012), 15 TTABVUE 3, 10-98, 141-267.
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A. Similarity of the Marks
Respondent’s mark is EYEDEWS, in standard characters. Petitioner’s mark
is EYE DEW. These marks are nearly identical. The absence of a space between
the words EYE and DEWS in the registered mark does not significantly affect its
commercial impression because consumers are still likely to recognize the
individual components. See, e.g., In re ING Direct Bancorp, 100 USPQ2d 1681,
1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion of
spaces); Giersch, 90 USPQ2d at 1025 (finding that DESIGNED TO SELL does not
create a distinct commercial impression from DESIGNED2SELL). In addition, it is
well-established that the singular and plural forms of the same term do not
generally create such different commercial impressions that confusion would be
avoided. See, e.g., In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA
1969); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).
Contrary to respondent’s argument that petitioner’s mark is not distinctive,
we find both marks to be inherently distinctive. Each is, at most, suggestive of a
skin care product for the eye area, incorporating a figurative meaning of the word
“dew” and a possible hint of romance from the aural double entendre “I do.”
We find that the marks are essentially identical in terms of appearance,
sound, connotation, and overall commercial impression. Therefore, the first du Pont
factor, similarity of the marks, weighs strongly in favor of finding a likelihood of
confusion.
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B. Similarity of the Goods and Channels of Trade
We next address the second and third du Pont factors, similarity of the goods
and channels of trade, respectively. Our determination regarding the relatedness of
the parties’ goods rests on the goods as identified in the registration. See Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).
Respondent’s identified goods are:
Beauty masks; Cosmetic creams for skin care; Cosmetic
preparations for skin renewal; Facial masks; Gel eye
masks; Lotions for skin; Non-medicated preparations all
for the care of skin, hair and scalp; Non-medicated skin
care preparations; Non-medicated skin care preparations,
namely, creams, lotions, gels, toners, cleaners and peels;
Non-medicated skin creams; Non-medicated stimulating
lotions for the skin; Skin and body topical lotions, creams
and oils for cosmetic use; Skin clarifiers; Skin
conditioners; Skin conditioning creams for cosmetic
purposes; Skin creams in liquid and in solid form; Skin
creams in liquid and solid [sic]; Skin creams in liquid and
solid form; Skin fresheners; Skin lotion; Skin lotions; Skin
masks; Skin moisturizer; Skin moisturizer masks; Skin
toners; Wrinkle removing skin care preparations.
We focus our analysis on the goods identified as “gel eye masks.”15
Petitioner’s product offered under the EYE DEW mark is an anti-aging skin
care formula for the eye area.16 On Amazon.com, both products are classified as

15 The only goods respondent has offered under the EYEDEWS mark are an under eye
mask anti-aging skin care product comprising under eye gel pads. See Petitioner’s Fourth
Notice of Reliance, Exh. 20, Response to Interrogatory No. 2, 13 TTABVUE 7; Petitioner’s
Second Notice of Reliance, Exh. 18, 30(b)(6) deposition transcript at 11:2-16, 11 TTABVUE
10.
16 See McLemore Decl. ¶ 3, 15 TTABVUE 2-3.
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“Beauty > Skin Care > Eyes > Puffiness Treatments.”17 We find these goods to be
highly similar or related.
It is sufficient for a finding of likelihood of confusion if confusion is likely with
respect to use of the mark on any item that comes within the description of goods in
the registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); Rocket Trademarks Pty. Ltd. v. Phard
S.p.A., 98 USPQ2d 1066, 1073 (TTAB 2011); Apple Computer v. TVNET.net Inc., 90
USPQ2d 1393, 1397 (TTAB 2007). The second du Pont factor thus weighs strongly
in favor of a likelihood of confusion.
Turning to the channels of trade, because respondent’s identification contains
no limitations as to trade channels or intended consumers, we presume that its
goods move in all channels of trade normal for those goods. Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012).
Moreover, the record shows that respondent’s trade channels include wholesale
suppliers, retail stores, spas, and direct telephone and internet sales to individual
customers, including through Amazon.com.18 Similarly, petitioner’s product is
offered through wholesale suppliers, retail stores, spas, telephone, internet, and

17 Toohey Decl. ¶ 6 & Exh. 7, 19 TTABVUE 3, 66-70; McLemore Decl. ¶ 8 && Exh. 8, 15
TTABVUE 4, 109-13.
18 See Petitioner’s Fourth Notice of Reliance, Exh. 20, Response to Interrogatory Nos. 6-7,
13 TTABVUE 8-9; Toohey Decl. ¶ 6, 19 TTABVUE 3.
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direct sale to consumers.19 We find that the channels of trade for the parties’ goods
are similar. The third du Pont factor also supports a finding of likely confusion.
C. Actual Confusion
Finally, we briefly address respondent’s argument that the parties have
coexisted for a number of years without actual confusion. Proof of actual confusion
is not necessary to show a likelihood of confusion, and its absence is not dispositive.
See Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843
(Fed. Cir. 1990); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 396 (Fed. Cir. 1983). Furthermore, it has often been recognized that
such evidence is difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf Supply
Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). We find that the du Pont factors
pertaining to actual confusion are neutral.
Conclusion
To the extent that any other du Pont factors for which no evidence was
presented may be applicable, we treat them as neutral. In view of our findings that
petitioner has priority of use, that the parties’ marks are highly similar, and that
their goods are highly similar or related and move in the same channels of trade, we
find that respondent’s mark is likely to cause confusion with petitioner’s mark when
used in association with respondent’s goods.
Decision: The petition to cancel is granted and Registration No. 3679354 will
be cancelled in due course.

19 See Registrant’s First Notice of Reliance, Exh. 13, Response to Interrogatory Nos. 6-7, 18
TTABVUE 8-9.