Club Amenities, LLCv.Pettenon Cosmetici snc

Trademark Trial and Appeal Board

Aug 18, 2005

No. 92043178 (T.T.A.B. Aug. 18, 2005)

Goodman Mailed: August 18, 2005

Cancellation No. 92043178

Club Amenities, LLC

v.

Pettenon Cosmetici snc

Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.

By the Board:

Pettenon Cosmetici snc, respondent, owns Registration
No. 2665115 issued on December 24, 2002 on the Principal
Register for the mark for “hair
fixing foams, hair sprays, hair fluid gels, hair lotions,
hair creams, shampoos, hair oils, hair masks, hair powder,
stabilized hydrogen peroxide for hair, coloring creams,
permanents, curative lotions, namely, non-medicated hair
lotions; lotions to prevent hair-loss” in International
Class 3.1

1 Filed on April 10, 2000, claiming a date of first use in
commerce of May 1999.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92043178
2
On April 9, 2004, Club Amenities, LLC, petitioner,
filed a petition to cancel the registration. As grounds for
the cancellation proceeding, petitioner alleges that
respondent’s mark, when used in connection with the recited
goods, so resembles petitioner’s previously used ALTER EGO
mark for “goods in the beauty care industry” as to be likely
to cause confusion, mistake, or to deceive.2 Petitioner has
also pleaded ownership of application Serial No. 76539224
for the mark for “cosmetics;
cosmetics and cleaning preparations, namely mousse,
sunscreen, hair gel, skin soaps, body lotions, hair shampoo,
conditioner, combined body and hair shampoos, hair spray,
shaving cream, aftershave lotion, aftershave splash,
deodorant, antiperspirant, perfumes and colognes and
mouthwash” in International Class 3.
In its answer, respondent, denies the salient
allegations in the petition to cancel and has asserted
affirmative defenses.

2 Petitioner also alleges ownership of now cancelled Registration
No. 1864486, for the mark ALTER EGO THE PERSONAL CARE COMPANION,
(“personal care” disclaimed) for “skin soaps, body lotions, hair
shampoo, conditioner, combined body and hair shampoos, hair
spray, shaving cream, aftershave lotion, aftershave splash,
deodorant, antiperspirant, perfumes and colognes and mouthwash”
in International Class 3; claimed date of first use in commerce
of January 1993. The registration issued on November 28, 1994
and was cancelled on December 8, 2001 under Section 8.

Cancellation No. 92043178
3
This case now comes up on the following motions:
1) respondent’s motion to extend discovery by an
additional sixty days, filed December 3, 2004;

2) petitioner’s motion for summary judgment on
the grounds of priority and likelihood of
confusion, filed December 3, 2004;

3) respondent’s motion to strike petitioner’s
reply brief as exceeding the page limit, filed
April 8, 2005; and

4) petitioner’s motion to accept its over-length
brief, filed May 12, 2005.

The motions are fully briefed.
We turn first to respondent’s motion to strike
petitioner’s reply brief and petitioner’s motion to accept
its over-length brief.
In support of its motion to strike, respondent
essentially argues that striking petitioner’s thirteen-page
reply is appropriate because the reply brief exceeds the
page limit by three pages.
In response, petitioner argues that the Board should
deny the motion to strike or disregard the last three pages
of the reply brief. Alternatively, petitioner requests that
the Board accept its over-length brief or allow petitioner
to conform the reply brief to the ten (10) page limit.
The Board will not consider briefs that exceed the page
limitation, nor will the Board dissect a party’s brief to
bring it within the allowable page limit. Saint Gobain
Corp. v. Minn. Mining & Mfg. Co., 66 USPQ2d 1220, 1222 (TTAB
Cancellation No. 92043178
4
2003). Inasmuch as petitioner’s reply brief is beyond the
page limit set by Trademark Rule 2.127(a), petitioner’s
reply brief filed in connection with the motion for summary
judgment will not be considered. However, we will consider
the rebuttal evidence submitted with petitioner’s reply.
Accordingly, respondent’s motion to strike is granted
to the extent indicated above.
We now turn to petitioner’s motion for summary judgment
on the grounds of priority and likelihood of confusion.
In support of its motion for summary judgment,
petitioner argues that it has priority because its
commercial use of its ALTER EGO mark has been continuous and
dates back to January 1993 which predates respondent’s
claimed date of first use in commerce of May 1999. With
regard to likelihood of confusion, petitioner maintains that
confusion is likely because the parties’ marks are identical
and the parties’ goods are “identical, overlapping, similar
and/or related” “beauty care products.”
As evidentiary support, petitioner has submitted a
declaration of Jan Ellis, president of petitioner who avers
that petitioner has used its ALTER EGO mark since at least
as early as January 1993; that petitioner continues to use
the ALTER EGO mark to the present day; and that petitioner
intends to continue using the mark in the future; that from
the date of first use until the present, the ALTER EGO mark
Cancellation No. 92043178
5
has appeared on the labels of all of petitioner’s products
sold under the mark; that petitioner uses the mark on all
advertising materials, price lists and petitioner’s Internet
website; and that from 1993 through 1999, petitioner had
approximately $2,000,000 in gross sales of 190,000 gallon
units as well as sales of several thousand units in smaller
sizes. In further support of these points, petitioner has
submitted copies of advertisements, price lists and photos
of the goods, in particular, file wrapper specimens from
petitioner’s now cancelled Registration no. 1864486 for the
mark ALTER EGO THE PERSONAL CARE COMPANION and file wrapper
specimens from its current application Serial No. 76539224
for the mark ALTER-EGO; a copy of its now cancelled
registration for the mark ALTER EGO THE PERSONAL CARE
COMPANION, and the TESS printout of its current application
Serial No. 76539224 for the mark ALTER-EGO, as well as a
print-out from its website evidencing use of the mark ALTER-
EGO. Petitioner also submitted the following additional
rebuttal evidence with its reply: declaration of Deborah
Westervelt, counsel for petitioner, and accompanying
exhibits which consist of petitioner’s discovery responses
to respondent’s interrogatories, petitioner’s answers to
respondent’s document requests, and copies of some of the
documents petitioner produced during discovery in connection
with respondent’s document requests; second declaration of
Cancellation No. 92043178
6
Jan Ellis, president of petitioner, in which Ms. Ellis avers
that petitioner has provided, in response to respondent’s
discovery requests, more than 400 invoices dating from 1995
to the present; that retail sizes of its ALTER EGO products
are 2, 12, 16, and 32 ounce bottles; that, due to cost, the
current catalog in use was printed in the 1999-2000 time
frame; that on February 14, 2003 petitioner became aware of
the cancellation of the ALTER EGO THE PERSONAL CARE
COMPANION registration; and that until that time petitioner
believed petitioner had an active registration for that
particular mark. As additional support for this
declaration, petitioner submitted, among other things, three
invoices dated from 1996.
In opposing the motion, respondent maintains that
petitioner’s “self-serving” declaration is insufficient to
establish prior continuous use of the mark ALTER EGO prior
to respondent’s first use in commerce; that the evidence “at
best” shows use of the mark ALTER EGO THE PERSONAL CARE
COMPANION and not ALTER EGO alone; that any rights to the
term ALTER EGO standing alone occurred after respondent
received its registration; that petitioner’s attempt to
revert back to a 1993 date of first use for ALTER EGO alone
fails for lack of proof; that petitioner fails to provide
evidence of continuous use of the mark ALTER EGO THE
PERSONAL CARE COMPANION; that to the extent that petitioner
Cancellation No. 92043178
7
had any trademark rights in ALTER EGO THE PERSONAL CARE
COMPANION, they were abandoned as evidenced by petitioner’s
failure to file its Section 8 affidavit for the registration
and its “delay for over twenty months” in applying for the
“new ALTER EGO mark.” With regard to likelihood of
confusion, respondent maintains that the likelihood of
confusion analysis must be based on respondent’s ALTER EGO
mark and petitioner’s “alleged rights” in the ALTER EGO THE
PERSONAL CARE COMPANION mark; that the marks are dissimilar
and have a significantly different commercial impression due
to different typeface and the fact that petitioner’s mark is
a slogan and respondent’s mark is not; that the goods are
sold in different channels of trade in that respondent sells
its goods to hair stylists and hair salons while petitioner
sells its goods in bulk sizes to public bathroom facilities
such as gyms and club locker rooms; that petitioner’s bulk
products are dispensed from custom-made private label
dispensers that prominently feature the name and logo of the
establishment offering the products; that the purchasers of
the goods are sophisticated; and that petitioner has not
produced evidence of actual confusion, and therefore, the
parties’ marks can coexist.3

3 Respondent also argues that petitioner should be equitably
estopped from “obtaining any relief in this proceeding” due to
improper use of the federal registration symbol both prior to
registration and after cancellation of its ALTER EGO THE PERSONAL
CARE COMPANION mark. These allegations have not been pled. A
Cancellation No. 92043178
8
Respondent has submitted the following evidence in
support of its position: file wrapper of respondent’s
Registration No. 2665115 (application Serial no. 76022339),
the involved ALTER EGO registration; file wrapper of
petitioner’s cancelled U.S. Trademark Registration Number
1864486 for the mark ALTER EGO THE PERSONAL CARE COMPANION;
file wrapper of petitioner’s application Serial no. 76539224
for the mark ALTER-EGO; copies of some documents produced by
petitioner during discovery; and a letter sent by the Boca
Raton Resort & Club with regard to respondent’s inquiry
regarding this third-party’s use of petitioner’s ALTER EGO
products.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). All doubts as to
whether or not particular factual issues are genuinely in
dispute must be resolved against the moving party, and the
evidence of record and any inferences that may be drawn from
the underlying facts must be viewed in the light most
favorable to the nonmoving party. Olde Tyme Foods Inc. v.

party may not defend against summary judgment based on an
unpleaded defense. See TBMP Section 528.07(b) (2d ed. rev.
2004). Therefore, this defense to petitioner’s motion for
summary judgment has not been considered.

Cancellation No. 92043178
9
Roundy’s Inc., 961 F.2d 200, 202 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
When the moving party’s motion is supported by evidence
sufficient, if unopposed, to indicate that there is no
genuine issue of material fact, and that the moving party is
entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely
disputed facts which must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
affidavit evidence showing the existence of a genuine issue
of material fact for trial. Fed. R. Civ. P. 56(c).
In order to prevail, petitioner must establish not only
a valid ground for cancellation, but must also prove its
standing. See e.g., Medinol Ltd. v. Neuro Vasx, Inc., 67
USPQ2d 1205 (TTAB 2003). Petitioner has proven its standing
by its president Jan Ellis’ statements in her first
declaration averring to petitioner’s use of the mark ALTER
EGO on hair care products identical or related to
respondent.4

4 Respondent has not contested petitioner’s standing, and
respondent acknowledges that petitioner sells “toiletries” and
“shampoo” in its response brief. Respondent’s submission with
its response brief of the file wrapper of petitioner’s pending
application Serial No. 76539224 for the mark ALTER-EGO is further
proof of petitioner’s allegation of standing in view of the
Office action citing respondent’s ALTER EGO registration against
Cancellation No. 92043178
10
In view thereof, and because petitioner’s likelihood of
confusion claim is not frivolous, we find that petitioner
has established its standing to petition to cancel
respondent’s registration. See, e.g., Lipton Industries,
Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
Turning first to priority, we find that petitioner has
met its burden of establishing prior and continuous use of
ALTER EGO as a trademark for beauty products as of 1993 with
continuous use to the present. The Ellis declaration
establishes that petitioner first used the ALTER EGO mark in
commerce in 1993, continues to use the mark to the present,
and intends to use the mark in the future. The invoices
dated from 1996 establish use of the mark well before the
May 1999 date of first use in commerce by respondent, and
petitioner’s responses to respondent’s interrogatories
further support the prior and continuous use of petitioner’s
ALTER EGO mark.
Petitioner has established continuous use of the mark
ALTER EGO both alone and as part of the composite mark ALTER
EGO THE PERSONAL CARE COMPANION. We find little merit with
regard to respondent’s arguments that petitioner’s prior use

petitioner’s application to register its ALTER-EGO mark under
Section 2(d) of the Trademark Act.

Cancellation No. 92043178
11
was for the mark ALTER EGO THE PERSONAL CARE COMPANION
rather than ALTER EGO. The advertisements, price lists and
invoices establish use of the mark ALTER EGO alone as well
as use of the mark ALTER EGO THE PERSONAL CARE COMPANION.
With respect to petitioner’s use of the mark ALTER EGO THE
PERSONAL CARE COMPANION, the terms ALTER EGO are in large
type and are more prominently displayed than the terms THE
PERSONAL CARE COMPANION; therefore, ALTER EGO is a separable
element.5 Thus, petitioner’s prior use of ALTER EGO THE
PERSONAL CARE COMPANION creates the same continuing
commercial impression as petitioner’s present use in that
purchasers would recognize ALTER EGO as a separable element
of the mark.
Lastly, with regard to respondent’s claim that
petitioner has abandoned its rights in the ALTER EGO and/or
ALTER EGO THE PERSONAL CARE COMPANION marks, we note that
respondent has not come forward with any proof of non-use,
but rather has done nothing more than make a cursory
allegation of an unspecified period of non-use based on
petitioner’s failure to file a Section 8 Declaration of Use
and subsequent cancellation of petitioner’s Registration No.
1864486 for the mark ALTER EGO THE PERSONAL CARE COMPANION.

5 Jan Ellis avers in her second declaration that for more than
ten years “‘Alter Ego is screen printed an average of 5 times
alone [on each bottle] while the tagline The Personal Care
Companion is on the bottle once in small print and not depicted
as part of the name.’”
Cancellation No. 92043178
12
Speculation without supporting evidence is not sufficient to
withstand a motion for summary judgment. Pure Gold v.
Syntext (U.S.A.), Inc., 730 F.2d 624, 627, 222 USPQ 741
(Fed. Cir. 1984). Even if respondent had made a prima facie
showing of three years of nonuse at some point in time prior
to August 20, 2003, petitioner's filing of its new
application to register the ALTER-EGO mark (76539224) on
that date would tend to negate any prima facie showing by
establishing petitioner's clear intent to resume use. Cf.
General Cigar Co. Inc. v. G.D.M. Inc. 45 USPQ2d 1481, 1490
(S.D.N.Y. 1997) (“party’s filing of trademark application
and conducting sales from the time of filing to the present
established rights to the mark.”).
Accordingly we find that there is no genuine issue of
material fact that petitioner has established its priority.
Turning to the issue of likelihood of confusion, we are
guided by the factors set forth in the case of In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). Our determination of likelihood of confusion
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion, which would include the similarity
of the marks and the similarity of the goods.6

6 Our primary reviewing Court has held that only those du Pont
factors shown to be material or relevant in the particular case
and which have evidence submitted thereon are to be considered.
Cancellation No. 92043178
13
Turning first to the similarity of the marks, we find
that the marks at issue are ALTER EGO and ALTER EGO and not
ALTER EGO and ALTER EGO THE PERSONAL CARE COMPANION as
respondent maintains. Thus, the analysis that follows is
based on a comparison of respondent’s ALTER EGO mark and
petitioner’s ALTER-EGO mark.
Although respondent attempts to distinguish the
respective marks by arguing that the marks are different due
to the use of “stylized typeface” rather than “block
letters,” when considered in their entireties, the marks are
identical in sound and connotation, virtually the same in
appearance, and essentially identical in overall commercial
impression. Thus, there is no genuine issue that the
parties’ ALTER EGO marks are essentially identical.
Turning to the relatedness of the goods, both parties
sell hair shampoos and hairspray and related hair care
products. Therefore, we find that the parties’ goods are
identical and/or related.
Turning next to channels of trade, in view of the legal
identity of, and/or close relationship between, the parties’
respective goods, we find as well that the trade channels
and the classes of purchasers for the respective goods are
identical and/or overlapping.7

7 Despite respondent’s arguments to the contrary, the evidence
reflects that petitioner sells in both retail (2, 12, 16 and 32
ounce sizes) and bulk sizes as evidenced by the second
Cancellation No. 92043178
14
Turning next to sophistication of purchasers,
respondent has argued, without evidentiary support, that the
purchasers are sophisticated. However, even assuming such
is the case, even sophisticated persons would be susceptible
to source confusion, particularly under circumstances where,
as here, the goods are closely related and are sold under
essentially identical marks. See Wincharger Corp. v. Rinco,
Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962).
Turning last to actual confusion, we find that this
factor favors neither party and is therefore, neutral.8
In summary, considering the essentially identical
marks, the identical and related nature of the goods, and
the overlapping channels of trade, we find that there are no
genuine issues of material fact that confusion is likely to
result.9
In view thereof, we find that petitioner has carried
its burden of proof and that no genuine issues of material
fact remain as to petitioner’s standing, priority or the
ground of likelihood of confusion. Therefore, petitioner is
entitled to judgment as a matter of law.

declaration of Jan Ellis and petitioner’s price lists. Moreover,
there is no limitation as to channels of trade in respondent’s
registration.
8 Although petitioner submitted some rebuttal evidence of actual
confusion with its reply to counter respondent’s argument in its
responsive brief, we do not find the evidence of actual confusion
sufficient to say that the du Pont factor focusing on instances
of actual confusion weighs solidly in petitioner's favor.
9 Respondent’s motion to extend discovery is moot.
Cancellation No. 92043178
15
Accordingly, petitioner’s motion for summary judgment
is granted and judgment is entered against respondent. The
petition to cancel is granted, and U.S. Registration No.
2665115 will be cancelled in due course.