Iredale Mineral Cosmetics, Ltd.v.PBI Group, Inc.

Trademark Trial and Appeal Board

Aug 9, 2011

No. 91188680 (T.T.A.B. Aug. 9, 2011)

Mailed:
August 9, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Iredale Mineral Cosmetics, Ltd.

v.

PBI Group, Inc.1
_____

Opposition No. 91188680
to application Serial No. 77542752
filed on August 8, 2008
_____

Lucy Prashker and Vanessa Halley of Cain Hibbard & Myers PC
for Iredale Mineral Cosmetics, Ltd.

Evan M. Fogelman of Underwood Perkins, P.C. for PBI Group,
Inc.
______

Before Seeherman, Walters and Ritchie, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

1 Applicant stated in its brief that its name is “TwoPIT, inc.,”
and that it was formerly known as PBI Group, Inc., and we note
that, beginning with the stipulation to allow testimony by
affidavit filed June 16, 2010, the parties have identified
applicant in the captions of their filings as “TwoPIT, INC.,
f/k/a PBI GROUP, INC.” However, applicant has never filed with
the Board any paper showing that its name has been changed, nor
has it recorded with the United States Patent and Trademark
Office a change of name. In these circumstances, we will
continue to refer to applicant by the name that is of record in
its application, namely, PBI Group, Inc.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91188680
2
Iredale Mineral Cosmetics, Ltd. has opposed the
application of PBI Group, Inc. to register the mark SoBronze
for “indoor and outdoor tanning products, namely,
non-medicated tan darkening lotions and skin moisturizers”
on the ground of likelihood of confusion.2 Opposer bases
the opposition on its common law rights in the mark So-
Bronze in connection with a bronzer cosmetic, alleging use
since September 23, 2002.
In its answer applicant has denied the salient
allegations in the notice of opposition, including
explaining more fully the bases for its denials.3
By operation of the rules, the record includes the
opposed application file and the pleadings. The parties
stipulated that testimony could be taken by affidavit, and
pursuant to that stipulation opposer submitted the
affidavits of Sharon Gregory, Daniel Burke and Vanessa
Halley and the rebuttal testimony affidavit of Vanessa
Halley; applicant submitted the affidavit and supplemental
affidavit of Wesley M. Neese.4 Opposer has also made of

2 Application Serial No. 77542752, filed August 8, 2008, based
on Section 1(b) of the Trademark Act (intent-to-use).
3 Applicant also asserted, as affirmative defenses, failure to
state a claim, waiver and estoppel, but did not submit any
evidence or argument regarding such defenses. Accordingly, we
deem them to have been waived.
4 We note that the affidavits of Ms. Gregory and Mr. Burke were
executed on August 6, 2010, two days before opposer’s testimony
period opened, and that the affidavit and supplemental affidavit
of Mr. Neese were executed on August 31, 2010 and September 20,
2010, respectively, before applicant’s testimony period opened on
October 7, 2010. Because the parties have treated the affidavits
Opposition No. 91188680
3
record, by notices of reliance, applicant’s responses to
certain of its interrogatories and requests for admission, a
copy of opposer’s application Serial No. 77662872, and an
Office action received in connection with that application.
The record shows that opposer is engaged in the
manufacture and sale of mineral-based cosmetic products.
Gregory ¶ 4.5 Since 2002 opposer has sold a bronzer under
the mark “So-Bronze.” Gregory ¶ 9, 11. Opposer’s bronzer
is sold in powder form in three different shades, So-Bronze
1 and So-Bronze 2, which were introduced in 2002, and So-
Bronze 3, which was introduced in 2010, Gregory ¶¶ 8, 15,
and is sold throughout the United States. Gregory ¶ 13.
Opposer sells its goods to, inter alia, spas, both beauty
and tanning salons, and online retailers, which in turn sell
them to retail customers. Gregory ¶ 16.6 Opposer has also
offered its So-Bronze bronzer on its own website, where it
can be purchased by retail consumers, and the bronzer is

as being of record, and because the early filing of the
affidavits is an error that could have been cured if seasonably
raised, we have considered this testimony and associated
exhibits. Cf. TBMP § 707.03(b)(1) (3d ed. rev. 2011).
5 We will identify the source of the evidentiary statements by
the name of the person providing the affidavit and the paragraph
number. Any reference to Halley’s rebuttal affidavit will be
identified as “Halley rebuttal,”, while Mr. Neese's supplemental
affidavit will be identified as “Neese supp.”
6 We are mindful that opposer has designated much of the
information regarding its sales as confidential, including the
types of establishments to which it sells its goods. However,
since opposer is relying on its common law rights, we must refer,
at least generally, to the channels of trade in which it sells
its goods to indicate its common law rights.
Opposition No. 91188680
4
also sold on third-party internet retail websites. Gregory
¶ 18.
Opposer’s So-Bronze product has been featured in
consumer magazines and newspapers, such as Organic Style and
the San Francisco Chronicle, Gregory ¶ 28, and in October
2008 it received the Shecky’s 2008 Beauty at its Best award
for “Best Bronzer.” Gregory ¶ 25. Opposer has promoted its
goods to ultimate consumers through, inter alia, its
website; social media networks such as Facebook; catalogs,
brochures and newsletters which are distributed to its
wholesale accounts which in turn distribute them to retail
consumers; and product displays at retail locations and
tradeshows. Gregory ¶ 26.
Applicant’s goods sold under the mark SoBronze are tan-
darkening lotions and skin moisturizers that contain
dihydroxyacetone, an ingredient which causes the skin’s
cells to change color. Neese ¶ 5. The purpose of the
products is to moisturize the skin, apply antioxidants and
achieve a semi-permanent darkening of the skin, which
develops over the course of two hours and lasts for up to a
week. Neese supp ¶ 2. The products are sold to
distributors who in turn sell them to professional tanning
salons and professional beauty salons, and consumers
purchase the SoBronze products in these salons. Neese ¶ 5.

Opposition No. 91188680
5
Standing
Opposer, in addition to showing that it uses the mark
So-Bronze for bronzers, has also made of record its
application for this mark for “bronzer” (Serial No.
77662872), as well as an Office action that issued for that
application, in which the examining attorney cited
applicant’s application, and stated that if applicant’s
application were to be registered, the examining attorney
may refuse registration to opposer’s mark on the basis of
likelihood of confusion with applicant’s mark. Opposer has
therefore shown that it has a personal stake in this
proceeding, and has established its standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and Fiat Group
Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1112 (TTAB
2010) (the filing of opposer’s application and the Office’s
action taken in regard to that application provides opposer
with a basis for pleading its standing).
Priority
Because opposer is relying on its common law rights,
priority is in issue. Cf. King Candy Company v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Opposer has shown that it has used the mark So-
Bronze for bronzers continuously since 2002. Applicant has
Opposition No. 91188680
6
admitted that its first use of the mark SoBronze in commerce
was no earlier than May of 2009. Admission No. 1. Because
applicant filed its application on August 8, 2008, and
submitted no evidence of earlier use, its constructive use
date of August 8, 2008 is the earliest date on which it can
rely. Thus, petitioner has established its priority.
Likelihood of confusion
Our determination of the issue of likelihood of
confusion 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 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
The first du Pont factor we consider is the similarity
of the marks. The marks are identical in pronunciation,
connotation and commercial impression, and virtually
identical in appearance. The literature advertising
opposer’s mark shows it in plain typed upper and lower case
letters, So-Bronze, without any design feature or unusual
font. Although opposer’s mark contains a hyphen between
“So” and “Bronze” and applicant’s mark does not, this is not
a meaningful distinction. See In re Sears, Roebuck and Co.,
2 USPQ2d 1312, 1313 (TTAB 1987) (marks CROSS-OVER and
CROSSOVER “identical in appearance but for the inclusion in
applicant’s mark of a hyphen, which, for purposes herein, is
Opposition No. 91188680
7
of no legal significance”). The test 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 so
that confusion as to the source of the goods and/or services
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). Consumers are simply not going to remember
whether or not a mark consisting of identical words does or
does not contain a hyphen. Moreover, even if they did note
the presence or absence of a hyphen, they would not ascribe
any import to it in terms of it indicating that the marks
represent different sources for the goods. The virtual
identity of the marks favors opposer. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(the identity of words, connotation, and commercial
impression [of the marks] weighs heavily against the
applicant, and their differences in script and arrow design
do not diminish their substantial identity when viewed as a
whole.)
We turn next to a consideration of the goods, keeping
in mind that where identical marks are involved, the degree
Opposition No. 91188680
8
of similarity between the parties’ goods that is required to
support a finding of likelihood of confusion declines.
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100 (TTAB
2007).
Opposer has shown that it has common law rights in the
mark So-Bronze for bronzers in powder form. Applicant’s
goods are identified as “indoor and outdoor tanning
products, namely, non-medicated tan darkening lotions and
skin moisturizers.” Opposer has presented affidavit
testimony and evidence that “bronzer” is a term used in the
beauty industry to describe various types of tanning
products, including sunless tanning and tan-enhancing
products. Gregory ¶ 7, exhibits 19 and 20. Applicant has
explained that its products, which contain dihydroxyacetone,
cause a semi-permanent darkening of the skin which can last
for up to a week, Neese ¶ 5, and therefore are different
from opposer’s bronzers.
We accept that there are specific differences between
the parties’ actual goods. However, it is a well-settled
principle of trademark law that it is not necessary that the
goods of the parties be similar or competitive, or even that
they move in the same channels of trade to support a holding
of likelihood of confusion. It is sufficient for purposes
herein that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
Opposition No. 91188680
9
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used therewith, give rise to the mistaken belief that
they originate from or are in some way associated with the
same producer. See In re International Telephone and
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1078).
In this case, the goods have a similar purpose, to
darken the skin. Although the specific manner in which they
achieve this purpose differs, the products would appeal to
many of the same consumers. In fact, the evidence of record
shows that some third parties advertise their products as
being both a tanner and bronzer. See, for example,
Neutrogena Instant Bronzer “Tanner & Bronzer for the Face”;
Worship “Indoor Tanning Salon Tan Lotion,”; “Lancome Flash
Bronzer Transfer Resistant Self Tanner Ultra”; Designer Skin
14 Karat Gold Tanning Lotion Bronzer,” Halley ex. 19.
Hempz calls its Black Label Hydromax product a “facial
bronzer,” but it promotes it as acting on skin cells:
“…technology activates deep-penetrating tanning boosters and
achieves a dynamic rate of Melanin synthesis for maximum
color density and darkness” and its “bronzers …gradually
continue to darken skin….” Halley ex. 20.
Moreover, both opposer’s and applicant’s goods are sold
in the same channels of trade, including beauty salons and
Opposition No. 91188680
10
tanning salons. The evidence also shows that on the online
retail site Amazon.com a search for “bronzer” retrieves both
bronzers of the type sold by opposer and tanning lotions.
See, e.g., CoverGirl Queen Collection Natural Hue Mineral
Bronzer, and Paint It Black 50X Auto-Darkening Dark Tann….
Halley ex. 19.
Applicant asserts that its products are authorized to
be sold only to professional beauty salons and professional
tanning salons, and that any sales through the internet or
any other sales channel are not authorized. There are two
problems with this position. First, applicant’s
identification does not limit the goods to any particular
channels of trade, and therefore we must assume that its
goods will travel in all channels of trade appropriate for
the goods as identified. The evidence of record shows that
online retail websites is an appropriate channel of trade
for such goods. More importantly, applicant acknowledges
that its goods are sold to beauty salons and tanning salons,
and opposer has shown that its goods are also sold to such
customers.
The du Pont factors of the similarity of the goods and
the channels of trade favor opposer.
Applicant has also argued that the consumers of its
goods are sophisticated. However, as we have discussed,
goods of the type identified in applicant’s application may
Opposition No. 91188680
11
be sold to the public at large through online retail sites.
Such ultimate users may also buy these products at beauty
and tanning salons. Such consumers cannot be considered
particular sophisticated or careful. Such a consumer who is
aware of or has purchased opposer’s So-Bronze bronzer at a
beauty salon and sees, for example, applicant’s SoBronze tan
darkening lotion at a tanning salon, will not realize that
the goods come from different sources. We would add that
even careful purchasers, such as beauty salon and tanning
salon wholesale purchasers, are unlikely to note the very
slight difference of the presence or absence of the hyphen
in the two marks.
Although neither party has discussed this du Pont
factor, we must comment on the strength of opposer’s mark.
Information about sales of opposer’s mark has been submitted
under seal, therefore we are circumscribed in our discussion
of this factor. We will say only that the sales figures
opposer has presented are not sufficient to prove that its
mark is famous or well-known. It is also obvious from the
nature of opposer’s mark that So-Bronze is suggestive of a
bronzer. However, even weak marks are entitled to
protection against registration of a confusingly similar
mark. See Giant Food Inc. v. Rosso and Mastracco, Inc., 218
USPQ 521 (TTAB 1982). Given the identity of the marks and
the closely related nature of the goods, opposer’s rights in
Opposition No. 91188680
12
So-Bronze for its bronzer extends to prevent the
registration of applicant’s mark SoBronze for its identified
“indoor and outdoor tanning products, namely, non-medicated
tan darkening lotions and skin moisturizers.”
To the extent that any other du Pont factors may be
deemed relevant, we have treated them as neutral.
In light of our discussion on the du Pont factors on
which we have evidence or argument, we find that opposer has
demonstrated that applicant’s mark SoBronze for “indoor and
outdoor tanning products, namely, non-medicated tan
darkening lotions and skin moisturizers”, is likely to cause
confusion with opposer’s mark So-Bronze for bronzers.
Decision: The opposition is sustained.