Facing The Worldv.Dan Maerovitz

Trademark Trial and Appeal Board

Dec 9, 2008

No. 91181253 (T.T.A.B. Dec. 9, 2008)

Mailed: 12/9/08

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Facing The World
v.
Dan Maerovitz
_____

Opposition No. 91181253
to application Serial No. 76672929
filed on February 21, 2007
_____

William C. Wright of Epstein Drangel Bazerman & James for
Facing The World.

Dan Maerovitz, pro se.
______

Before Quinn, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Dan Maerovitz filed an intent-to-use application to
register the mark FACE THE WORLD for “cosmetics, namely
skincare and beauty products, in cream or liquid form.”
Facing The World opposed registration under Section
2(d) of the Trademark Act on the ground that applicant’s
mark, if used in connection with applicant’s goods, would so
resemble opposer’s mark FACING THE WORLD, the subject of
intent-to-use application Serial No. 78710155, filed on
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91181253
2
September 9, 2005, as to be likely to cause confusion.
Opposer’s application seeks registration of the mark FACING
THE WORLD for “educational services, namely conducting
seminars, conferences and courses in the field of medicine;
training in the use and operation of medical equipment;
medical training and teaching; on-line publication of case
studies, news, and general articles relating to cranio-
facial surgery; publishing education material in the nature
of books, leaflets, reports, magazines and brochures in the
field of medicine” (in International Class 41); and
“provision of medical services; providing medical
consultancy services” (in International Class 44). In the
notice of opposition, opposer identifies itself as “a
children’s charity” that under the mark FACING THE WORLD
“provides medical services and consultancy services,
including complex surgeries for children in desperate need
to transform their faces and radically change their quality
of life.”
Applicant, in his answer, denied the salient
allegations in the notice of opposition. Applicant also set
forth several statements amplifying its position that there
is no likelihood of confusion between the marks.1

1 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; such statements must be
established by competent evidence. Times Mirror Magazines, Inc.
v. Sutcliff, 205 USPQ 656, 662 (TTAB 1979); and TBMP §704.06(a)
(2d ed. rev. 2004).
Opposition No. 91181253
3
Pursuant to agreement, the parties tried this case by
using the Board’s “Accelerated Case Resolution” (ACR)
procedure. See www.uspto.gov/web/offices/dcom/ttab/adr.doc.
Given the parties’ agreement, familiarity with this
procedure is presumed. The record consists of the
pleadings; the involved application; and the evidence
accompanying opposer’s ACR brief. More specifically,
opposer filed the declaration of Jason Drangel, an attorney
with opposer’s law firm. Attached as exhibits to the
declaration are copies of opposer’s and applicant’s
applications;2 applicant’s responses to opposer’s discovery
requests; and excerpts of third-party websites and articles
retrieved from the Internet. Applicant neither filed a
brief nor submitted any testimony or other evidence.
Insofar as priority is concerned, an opposer may rely
on the constructive use provisions of Section 7(c) of the
Trademark Act to establish its priority for purposes of
Section 2(d). An opposer may rely on Section 7(c) to
establish priority if it owns a registration for the mark it
is asserting under Section 2(d) or if it has filed an
application (even an intent-to-use application) for
registration of that mark. Larami Corp. v. Talk To Me

2 Opposer’s submission of applicant’s application was unnecessary
inasmuch as the application file against which a notice of
opposition is filed forms part of the record of the proceeding
without any action by the parties. Trademark Rule 2.122(b); and
TBMP §704.03(a) (2d ed. rev. 2004).
Opposition No. 91181253
4
Programs Inc., 36 USPQ2d 1840, 1845 n. 7 (TTAB 1995). In
the present case, opposer filed a copy of its pleaded
intent-to-use application.3 Opposer is entitled to claim
the filing date, September 9, 2005, of this application as
its date of constructive use.
Applicant did not offer any evidence regarding use of
its mark, so the earliest priority date upon which it can
rely is the filing date of its application, namely February
21, 2007. See, e.g., Mason Engineering & Design Corp. v.
Mateson Chemical Corp., 225 USPQ 956, 961 (TTAB 1985). In
saying this, however, we recognize that applicant’s
discovery responses submitted by opposer arguably show a
first use of applicant’s mark on January 19, 2007.
Nevertheless, both applicant’s first use date and filing
date are later than opposer’s constructive use date of
September 9, 2005.
Inasmuch as opposer’s constructive use date precedes
the earliest date upon which applicant may rely, we find
that opposer has priority.
As to likelihood of confusion, our determination is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

3 The mark was published for opposition, a Notice of Allowance
has issued, and a second extension of time to file a statement of
use has been filed.
Opposition No. 91181253
5
(CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods and services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant’s mark FACE THE WORLD is strikingly similar
to opposer’s mark FACING THE WORLD. The marks are virtually
Opposition No. 91181253
6
identical in appearance and sound, differing only in the
“-ING” portion of the first word of opposer’s mark.
Further, the marks have similar meanings and they engender
virtually identical overall commercial impressions. The
marks are only somewhat suggestive, but, as pointed out by
opposer, the marks suggest the same idea, i.e., “the ability
of the consumer to meet the world head on without
embarrassment, given the consumer’s improved appearance from
the use of a cosmetic product, or the change in the
consumer’s appearance, resulting from Opposer’s medical
services, e.g., cosmetic surgery services.” (Brief, p. 6).
The virtual identity between the marks weighs heavily
in opposer’s favor.
With respect to the du Pont factor of the nature and
number of similar third-party marks in use on similar goods
and/or services, the record is devoid of any such evidence.
With respect to the goods and services, it is not
necessary that the respective goods and/or services be
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods and/or services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
Opposition No. 91181253
7
the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Moreover, if
the marks are the same or almost so, it is only necessary
that there is a viable relation between the goods and/or
services to support a holding of likelihood of confusion.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689
(Fed. Cir. 1993); and In re Opus Wine Inc., 60 USPQ2d 1812,
1815 (TTAB 2001).
Opposer has submitted evidence of third-party websites
and articles retrieved from the Internet to show that
opposer’s services, most particularly, its medical services,
are related to cosmetics. The evidence shows that
physicians, in conjunction with their medical services,
frequently sell cosmetic products to their patients and
other consumers. One article notes that well known doctors
may turn their clinical experience into products backed by
their own names and medical credentials. (www.beauty-on-
line.com). Another article discusses the fact that Rodeo
Drive Plastic Surgery in Los Angeles has been named the
exclusive distributor of a line of skincare cosmetics.
(www.rodeodriveplasticsurgery.com). An additional article
captioned “New wrinkle in anti-aging cosmetics. Doctors
jumping into lucrative market.” discusses the trend that
doctor-branded lines of
“cosmeceuticals,” as they have been come
Opposition No. 91181253
8
to be known in the industry, are rapidly
moving from spas and physicians offices
into retail markets, and have become the
fastest-growing segment of the $2.1
billion cosmetics market at prestige
department stores...now they are heading
for even greater growth by infiltrating
mid-level department stores and chain
drugstores. “This whole sector is
exploding,” said Dr. Bruce Katz, a New
York dermatologist who sells an
extensive line of products from his
office. “Cosmetic companies are rushing
to get on board. They know this is the
next big thing.”

(www.bostonglobe.com) Opposer introduced several other
articles, all discussing the above-referenced trend among
dermatologists and plastic surgeons to offer, in conjunction
with their medical services, a line of skin care cosmetics,
often times under the physician’s name.
Likelihood of confusion must be determined on the basis
of the goods as they are identified in the involved
application, “cosmetics, namely skincare and beauty
products, in cream or liquid form.” There are no
restrictions in applicant’s identification, and we must
presume that the cosmetics include those sold or recommended
by physicians. Further, opposer’s medical services, as
identified in its application, are not limited, and we
presume that they include those rendered by dermatologists
and plastic surgeons. Opposer’s services and applicant’s
goods are capable of being sold through the same trade
channels to the same classes of purchasers, including
Opposition No. 91181253
9
consumers who may have undergone cosmetic surgery and who
wish, for example, to diminish or hide scarring by using
cosmetics.
The similarity between the goods and services, trade
channels and classes of purchasers are factors that weigh in
favor of a finding of likelihood of confusion.
On balance, the du Pont factors weigh in favor of a
finding of likelihood of confusion. We conclude that
consumers familiar with opposer’s medical services rendered
under the mark FACING THE WORLD, upon encountering
applicant’s mark FACE THE WORLD for cosmetics, would be
likely to believe that the goods and services originate from
or are associated with or sponsored by the same entity.
As noted earlier, opposer’s priority is based on
constructive use. In such a circumstance, the Board will
not enter a final judgment until the registration issues.
This is because constructive use is “[c]ontingent on the
registration of a mark on the principal register.” Section
7(c). Section 18 of the Trademark Act provides that “no
final judgment shall be entered in favor of an applicant
under Section 1(b) before the mark is registered, if such
applicant cannot prevail without establishing constructive
use pursuant to Section 7(c).” TBMP §901.02(b) (2d ed. rev.
2004).
Opposition No. 91181253
10
Decision: The opposition is sustained contingent upon
opposer’s registration of the mark in application Serial No.
78710155. The time of filing an appeal or for commencing a
civil action will run from the date of the present decision.
See Trademark Rules 2.129(d) and 2.145. When opposer’s mark
has registered or its application therefor becomes
abandoned, opposer should promptly inform the Board, so that
appropriate action may be taken to terminate this
proceeding.