Dolphin Acquisition Corp.

Trademark Trial and Appeal Board

Apr 17, 2001

No. 75008309 (T.T.A.B. Apr. 17, 2001)

5/31/01
Paper No. 16
UNITED STAT
Tradem
In re Dolphin Acq
S
Requ
Michelle D. Kahn of Sh
Dolphin Acquisition Co
Amy L. Alfieri, Tradem
(Ronald R. Sussman, Ma
Before Hairston, Chapm
Judges.
Opinion by Bucher, Adm
Dolphin Acquisiti
requested reconsiderat
decision affirming the
to register the mark sTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
ES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
uisition Corp. d.b.a. Bare Escentuals
________
erial No. 75/008,309
_______
est For Reconsideration
_______
eppard Mullin Richter & Hampton, LLP for
rp.
ark Examining Attorney, Law Office 109
naging Attorney).
_______
an and Bucher, Administrative Trademark
inistrative Trademark Judge:
on Corp. d.b.a. Bare Escentuals has
ion of the Board’s April 17, 2001
Trademark Examining Attorney’s refusal
hown below:
Serial No. 75/008,309
2
for “cosmetics, namely, foundation, blush, eye shadow,
lipstick and mascara,” in International Class 3.1 Registration
was refused on the ground that applicant's mark, if used on
these cosmetic items, so resembles the mark ID, registered for
“cologne, perfume and fragrances for personal use,”2 as to be
likely to cause confusion, to cause mistake or to deceive.
Applicant maintains that during six years of coexistence
by these respective marks in the marketplace, there has not
been one instance of actual confusion reported to applicant.
Further, the argument is made again that applicant offers
these goods exclusively through its own stores and over the
Internet.
As to the du Pont factor dealing with the length of time
during and conditions under which there has been concurrent
use without evidence of actual confusion, we have no evidence
that these respective marks have ever been used
contemporaneously in the same geographical area. As to
whether there has been sufficient opportunity for confusion to
occur, the record contains no indication of the level of sales
or advertising by applicant. Yet the absence of any instances
of actual confusion is a meaningful factor only where the
1 Application serial number 75/008,309, filed on October 20,
1995, based upon an allegation of a bona fide intention to use the
mark in commerce.
2 Reg. No. 2,130,888, issued on January 20, 1998.
Serial No. 75/008,309
3
record indicates that, for a significant period of time, an
applicant’s sales and advertising activities have been so
appreciable and continuous that, if confusion were likely to
happen, any actual incidents thereof would be expected to have
occurred and would have come to the attention of one or both
of these trademark owners. Similarly, we have no information
concerning the nature and extent of registrant’s use, and thus
we cannot tell whether there has been sufficient opportunity
for confusion to occur as we have not had opportunity to hear
from the registrant on this point. All of these factors
materially reduce the probative value of applicant’s argument
on the matter of actual confusion. Therefore, applicant’s
claim that no instances of actual confusion have been brought
to applicant’s attention is not indicative of an absence of a
likelihood of confusion. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In any event, we are
mindful of the fact that the test under Section 2(d) of the
Act is likelihood of confusion, not actual confusion.
We turn then to the applicant’s repeated concerns about
disparate channels of trade. As we noted in our prior
decision:
Applicant has tried to draw a distinction
between its goods and those of registrant by
characterizing its goods as distributed only
through applicant's “Bare Essentials (sic)”
chain of retail stores. The difficulty with
Serial No. 75/008,309
4
applicant's argument is that the identification
of goods does not reflect this limitation.
This last sentence contained a footnote as follows:
While applicant offered at the time of its
reply brief to amend its identification of
goods to include such a restriction, this was
much too late in the prosecution of this
application for the Office to consider this
limitation.
Nonetheless, applicant has now requested that the
identification of goods be amended to read as follows:
“cosmetics, namely, foundation, blush, eye
shadow, lipstick and mascara, for distribution
only in the BARE ESCENTUALS® retail stores,” in
International Class 3.
However, once an application has been considered and
decided by the Board on appeal, an applicant may not amend its
application or submit additional evidence (except in two
situations that do not apply to this case). See Trademark
Rule 2.142(g)3 and TBMP §1218.
Applicant, of course, always retains the option of filing
a new application having express limitations on the channels
of trade included within its identification of goods.
3 Trademark Rule 2.142(g) reads as follows:
An application which has been considered and decided on
appeal will not be reopened except for the entry of a
disclaimer under section 6 of the Act of 1946 or upon
order of the Commissioner, but a petition to the
Commissioner to reopen an application will be considered
only upon a showing of sufficient cause for consideration
of any matter not already adjudicated.
Serial No. 75/008,309
5
In summary, for the reasons discussed in our decision as
well as those reviewed above, we adhere to our finding that
there is a likelihood of confusion with the cited mark.
Decision: The request for reconsideration is denied.