Carolina Herrera, Ltd.

Trademark Trial and Appeal Board

Jul 20, 2001

No. 75668973 (T.T.A.B. Jul. 20, 2001)

Paper No. 10
RLS/JMP
7/20/01

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Carolina Herrera, Ltd.
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Serial Nos. 75/668,973 &
75/668,974
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Robert G. Sugarman of Weil, Gotshal & Manges LLP for Carolina Herrera, Ltd.

Jeffrey C. Coward, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
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Before Simms, Hanak and Rogers, Administrative Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

Carolina Herrera, Ltd. (applicant) has appealed from the final refusal of
the Trademark Examining Attorney to register the mark 212 CAROLINA
HERRERA for “cosmetics, namely, skin lotions, skin creams, toilet and beauty
soaps, body milks, talcum powder, essential oils for personal use, deodorant for
personal use and preparations for the hair, namely, shampoos and gels,”1[1] and

1[1] Application Serial Number 75/668,973, filed March 26, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
for “perfumery, namely, perfumes, colognes and eau de toilet.”2[2] In each case,
the Examining Attorney has refused registration under Section 2(d) of the Act, 15
U.S.C. §1052(d), on the basis of Registration No. 1,262,148, issued December 27,
1983, (Sections 8 and 15 affidavit filed) for the mark 212 for skin conditioner. For
convenience, we shall treat these appeals together.
Applicant and the Examining Attorney have filed briefs and applicant
submitted a reply brief. Applicant did not request an oral hearing.
At the outset, we should note that the Examining Attorney has objected to
applicant’s brief on the basis that it exceeds the allowable page limit of 25 pages.
See Trademark Rule 2.142(b)(2). Applicant’s main briefs in these two appeals
run 31 and 32 pages long, respectively, counting only the pages of argument.
They are 38 and 39 pages long, respectively, when the title page, table of contents
and table of authorities are included. Trademark Rule 2.142(b)(2), provides that,
without prior leave of the Board, a brief may not exceed 25 pages in its entirety.
The Examining Attorney’s objection is well taken and applicant’s main briefs will
not be considered.3[3]

2[2] Application Serial No. 75/668,974, filed March 26, 1999.
Both applications claim use since August 14, 1997. Both
applications also claim ownership of several registrations.
3[3] The Examining Attorney has also objected to applicant’s
submission with its briefs of third-party registration evidence.
Even if we had not excluded applicant’s entire briefs, the third-
party registration evidence submitted therewith would have been
excluded as untimely. See Trademark Rule 2.142(d) and TBMP
§§1106.07(b) and 1207.01.
The Examining Attorney argues that confusion is likely. First, the
Examining Attorney notes that applicant’s goods, especially its skin lotions and
skin creams, are closely related to registrant’s skin conditioner. The Examining
Attorney argues that, because the issue of likelihood of confusion must be
determined on the basis of the goods as identified in the respective registration
and applications, which are without limit as to the specific type of goods or as to
the channels of trade and classes of purchasers, we must presume that
registrant’s skin conditioners encompass all types of such goods and move in all
normal channels of trade for those goods to all potential customers. The
Examining Attorney also contends that the more closely related the respective
goods, the less similarity is required between the marks in order to support a
finding of likelihood of confusion.
With respect to the marks, the Examining Attorney argues that registrant’s
mark 212 is an arbitrary one for skin care products, and that the addition of
applicant’s name CAROLINA HERRERA (applicant’s house mark) is not
sufficient to overcome the likelihood of confusion. Although both registrant’s
and applicant’s marks are presented in typed form, the Examining Attorney
notes that the manner of applicant’s actual use (shown below) exacerbates the
likelihood of confusion:
Further, the manner in which the applicant displays the proposed
mark on the specimens of
records accentuates the prominence of the 212
portion of the mark. Specifically, 212 is
displayed in a much larger and bolder font, and slightly above the
additional wording (i.e.,
CAROLINA HERRERA). Accordingly, it is highly
likely that consumers will focus on the 212 portion
of the mark, and may even refer to the products
simply as 212 when asking for the applicant’s products.

Also, even assuming that applicant’s mark is famous, as applicant has
argued, the Examining Attorney contends that this alleged fame may enhance
reverse confusion (the belief that both goods come from applicant), or encourage
consumers to believe that Carolina Herrera endorsed or was in some way
associated with the registrant’s 212 goods.
Applicant, on the other hand, argues that its goods and registrant’s goods
are specifically different, with applicant’s goods being high-end cosmetics
whereas registrant’s actual goods are in fact therapeutic skin conditioners sold in
large quantities to factories for use in workers’ washrooms. Applicant maintains
that the respective goods travel in different channels of trade, applicant’s goods
being sold in upscale department stores and exclusive cosmetic boutiques to
sophisticated, affluent purchasers, whereas registrant’s goods are sold to
commercial establishments. Applicant also argues that its goods are relatively
expensive. Concerning the marks, applicant contends that they project different
commercial impressions. In this regard, applicant states that CAROLINA
HERRERA is a world-renowned mark, which distinguishes its 212 CAROLINA
HERRERA mark from registrant’s mark. Also, although the cited mark is for the
number 212, applicant compares its 212 CAROLINA HERRERA mark to the
mark NORTH 212, which apparently includes registrant’s house mark NORTH,
arguing that there is no possibility that these two different house marks will be
confused.
Upon careful consideration of this record and the arguments of the
attorneys, we conclude that confusion is likely. First, as the Examining Attorney
has argued, the issue of likelihood of confusion must be determined on the basis
of the goods as they are identified in the applications and the registration.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); Octocom Systems, Inc. v Houston Computer Services, Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and Paula Payne Products Co. v Johnson
Publishing Co, Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). If the cited
registration and applicant’s applications list the goods broadly and there are no
limitations as to the nature, type, channel of trade or classes of purchasers, we
must presume that the registrant’s goods (as well as applicant’s) encompass all
goods of the type described, that they move in all normal channels of trade and
that they are available to all potential customers. In re Elbaum, 211 USPQ 639
(TTAB 1981). Applicant’s skin lotions and skin creams as well as its perfume
products are closely related to registrant’s skin conditioners.4[4] These goods are
similar, and may be sold in the same stores to the same class of purchasers. Also,
contrary to applicant’s arguments, we must assume that the respective products
include relatively inexpensive items which may be sold to average purchasers.
Concerning the marks, we are in agreement with the Examining Attorney
that applicant’s mark so closely resembles registrant’s mark that, when used in
connection with these closely related goods, confusion is likely. When an
applicant seeks registration of its mark in unstylized capital letters, we are aided
by applicant’s specimens showing the mark as actually used. Phillips Petroleum
Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) and INB National
Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992). Here, the 212 portion of
applicant’s mark appears above and much more prominently than the name
CAROLINA HERRERA shown in much smaller print. Consumers, aware of
registrant’s 212 skin conditioners, who then encounter applicant’s 212

4[4] The Examining Attorney has supported the relationship of
applicant’s perfume products by relying upon third-party
registrations of marks covering both perfume products and skin
care products. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
CAROLINA HERRERA skin care and perfume products, wherein the number
212 is prominently used, are likely to believe that these goods come from the
same source or that applicant’s goods are sponsored or authorized by registrant.
What the Board stated in In re Riddle, 225 USPQ 630, 633 (TTAB 1985), is also
applicable here:
Applicant urges that, because of the fame of Richard Petty in
conjunction with automobile racing, it is the “RICHARD PETTY’S”
portion of applicant’s mark which dominates the mark and
which would cause it to be easily
distinguishable from the mark shown in the cited registration. The
problem with applicant’s argument is that, while the name
“Richard Petty” might well be a famous one in connection with
automobiles and automobile racing, this fact does not diminish the
likelihood of confusion in this case. In particular, those who
encounter both the “ACCUTUNE” automotive testing equipment
and the automotive service centers offered under applicant’s mark
would likely believe that Richard Petty endorsed or was in some
way associated with both the goods and the services, in that both
marks contain the designation “ACCUTUNE”.

Decision: The refusal of registration is affirmed in
both applications.