Marcon

Trademark Trial and Appeal Board

Mar 6, 2008

No. 76596736 (T.T.A.B. Mar. 6, 2008)

Mailed:
March 6, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marcon
________

Serial No. 76596736
_______

Robert Victor Marcon (pro se).

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On June 9, 2004, Robert V. Marcon (proceeding pro se)
filed an application under Trademark Act Sections 1(b) and
44(d), 15 U.S.C. §§ 1051(b) and 1126(d), for registration
of the mark L’OREAL PARIS (in standard character form) on
the Principal Register for goods ultimately amended to
“aloe vera drinks” in International Class 32.
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(a) of the Trademark
Act, 15 U.S.C. 1052(a), on the ground that applicant’s mark
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 76596736
2
consists of or comprises matter which falsely suggests a
connection with L’Oréal, S.A. (“L’Oréal”), which the
examining attorney states is a French cosmetics and beauty
products company.
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. We reverse the refusal to register.
Trademark Act Section 2(a) states, in relevant part,
No trademark by which the goods of the applicant
may be distinguished from the goods of others
shall be refused registration on the principal
register on account of its nature unless it - (a)
consists of or comprises … matter which may
disparage or falsely suggest a connection with
persons living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or
disrepute.

In University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), the Court of Appeals for the Federal Circuit stated
that to succeed on a Section 2(a) false suggestion of a
connection ground, the plaintiff must demonstrate that the
name or equivalent thereof claimed to be appropriated by
another must be unmistakably associated with a particular
personality or “persona” and must point uniquely to the
plaintiff. The Board, in Buffett v. Chi-Chi's, Inc., 226
USPQ 428 (TTAB 1985), in accordance with the principles set
forth in Notre Dame, required that the following four
Serial No. 76596736
3
elements be satisfied in order to establish a false
suggestion of a connection under Trademark Act Section
2(a):
(i) that the defendant's mark is the same or a
close approximation of plaintiff's previously
used name or identity; (ii) that the mark would
be recognized as such; (iii) that the plaintiff
is not connected with the activities performed by
the defendant under the mark; and (iv) that the
plaintiff's name or identity is of sufficient
fame or reputation that when the defendant's mark
is used on the goods or services, a connection
with the plaintiff would be presumed.

Id. at 429.
In this ex parte proceeding, it is the Office which
must establish the elements relating to the “plaintiff's”
name, which is the name with which the examining attorney
asserts the applicant's mark falsely suggests a connection.
Because we find that the Office has not established the
fourth factor set forth in Buffett, namely, that L’Oréal is
of sufficient fame or reputation to consumers in the United
States that, when applicant's mark is used on its goods, a
connection between the marks and company would be presumed,
we reverse the refusal of registration.
We first address one preliminary matter, i.e., the
examining attorney’s submission of an entry for “L’Oréal”
from wikipedia.org. Although Wikipedia entries have
inherent limitations because an article at any given time
Serial No. 76596736
4
may contain significant misinformation, “the Board will
consider evidence taken from Wikipedia so long as the non-
offering party has an opportunity to rebut that evidence by
submitting other evidence that may call into question the
accuracy of the particular Wikipedia information.” In Re
IP Carrier Consulting Group, 84USPQ2d 1028 (TTAB 2007). In
this case, the examining attorney submitted the Wikipedia
entry with her denial of applicant's request for
reconsideration. Inasmuch as applicant did not have an
opportunity to rebut the Wikipedia evidence, we accord it
no probative value.1
In contending that L’Oréal “is world-famous,” the
examining attorney relies on the following evidence taken
from the Internet:
“[T]he L’Oreal Group has developed activities in
the field of cosmetics, and is the world leader
in the cosmetics industry. The L’Oreal Group is
also active in luxury goods and in the
dermatological and pharmaceutical fields.”
loreal.com

“Why is L’Oreal USA the leading beauty company in
America? *** L’Oreal USA is a leader in beauty:
#1 Professional Salon Products (Matrix)
#1 Ethnic Hair Care (Soft Sheen/Carson)
#1 Mass Market Hair Color (L’Oreal Paris)

1 While the opportunity to request remand to submit new evidence
is available to an applicant, the evidentiary record in an
application should be complete prior to the filing of an ex parte
appeal to the Board. Trademark Rule 2.142(d). Thus, in view of
the inherent limitations of Wikipedia entries, examining
attorneys should submit these entries prior to a request for
reconsideration.
Serial No. 76596736
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#1 Mass Market Cosmetics (Maybelline)
#1 Prestige Men’s Fragrances (Ralph Lauren)
#1 Overall beauty brand (L’Oreal Paris)

*** Always on the leading edge of technology for
its industry, L’Oreal research produces several
hundred patents a year. This prolific activity
places us in the top 100 research companies in
the nation, ahead of all of our competitors.

L’Oreal is the leading beauty company in the
United States, in Canada, in Mexico – and in the
world!”
lorealusa.com

“The world’s leading beauty company - revealed!”
lorealparisusa.com

Based on the URL addresses, as well as the content on the
webpages, these three websites appear to be L’Oréal’s own
websites. Because L’Oréal controls the content of these
websites, their probative value is very limited; it would
be an easy matter for the owner of a website to include
information that suited its own position, whether or not it
was true. Accordingly, in view of the source of the
information in the websites, we have given this evidence
very limited weight.
The examining attorney also submitted excerpts from a
search for “l oreal” (with a space between the letters “l”
and “o”) on the Nexis database. Most of the results refer
to L’Oréal in an indirect manner and have little bearing on
the question before us regarding the fame or reputation of
the French cosmetics and beauty products company. See,
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e.g., excerpt from the December 17, 2001 Cox News Service
article, “L’Oreal consulting makeup artist Collier Strong
offers the following hints to go from office to party in a
matter of minutes.” Additionally, the examining attorney’s
Nexis search located only forty-eight stories, which is a
relatively low number and does not support her position
that L’Oréal is a “very famous” company.
The following evidence of record also has little
probative value for the reasons stated:
1. Search results for “L’Oreal Paris” on the
Metacrawler search engine, with sixty entries in
the list. Some of the entries are not in English
and some are too brief to allow us to associate
the entries with the cosmetics company. Other
excerpts appear to reference “L’Oréal Paris”
tangentially, such as the entry for
beverlycenter.com which specifies driving
directions and store locations for a particular
mall, and the entry for verveonline.com which
simply states in relevant part, “L’Oréal Paris
and Elite India in ….” See In re Fitch IBCA
Inc., 64 USPQ2d 1058, 1060 (TTAB 2002)
(“[e]vidence of actual use of a phrase by a
website has far greater probative value than …
search summaries” on the Google search engine.)

2. Registrations containing the term “L’Oreal.”
The examining attorney maintains that “the owner
of all of the marks that contain the word
‘L’OREAL’ in the United States, except for the
present application, is the French company,
L’Oreal.” Brief at unnumbered p. 4. The fact
that a particular entity may own registrations
does not show that the entity is famous, or that
people would know either the registered marks or
the entity which owns them.

Serial No. 76596736
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3. The excerpt from wireimage.com which states,
“Presented by L'Oreal Paris, the Australian Film
Institute's annual awards show got under way in
Melbourne this week, honoring artistic and
technical achievements by Australian filmmakers
and actors.” This excerpt concerns activities by
L’Oreal in Australia and not in the United
States.2

4. An excerpt and webpages mentioning
fundraising activities and awards by L’Oréal,
namely:

“L’Oreal Paris and Netaya are proud to
assist in raising money to support The
Ovarian Cancer Research Fund.”
amazon.com

“On May 5, Kelly George -- a third-year
Chemistry doctoral student -- received
an award from the L'Oreal USA for Women
in Science program for her research and
contributions to organic chemistry.”
Daily Pennsylvanian via University
Wire, May 27, 2004

“L'Oréal Paris is proud to announce
that it will continue to celebrate the
spirit of community achievement and
volunteerism with its second Women of
Worth program.”
csrwire.com

We have no way of ascertaining what exposure the article
and webpages may have had. One appears to have been in a
college newspaper in 2004, and another appears to be a wire
service report. Given that the Internet is a repository
for all kinds of statements and information which may or

2 The excerpt from beautifulreview.com, i.e., “L’Oreal Paris
is just one of the 22 brands that are under the umbrella of
worldwide cosmetics giant L’Oreal” does not indicate
Serial No. 76596736
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may not be accessed by the public, the mere fact that these
three references were retrieved by an Internet search is
insufficient to show that the company L’Oréal has any fame
or reputation.
We also note that the following evidence is in the
record:
“Jacques Correze, 79, the chairman of the U.S.
marketing arm of the cosmetics giant L’Oreal,
announced in Paris his resignation ….”
Arkansas Democrat-Gazette, June 27, 1991.

“Diane Keaton has a new role. The Oscar-winning
actress, who is 60, will star as a spokesperson
for L’Oreal Paris and its brands.”
usatoday.com

Looking at all the evidence submitted by the examining
attorney, we find that these references do not establish
L’Oréal’s fame or reputation, even in the context of an ex
parte proceeding.3
In view of the foregoing, we find that the Office has
not met its burden of proving that L’Oréal is of sufficient
fame or reputation to consumers in the United States that a
connection between applicant's mark and that company would

activity in the United States; this excerpt too has limited
probative value.
3 Both the Federal Circuit, our primary reviewing court, and the
Board have recognized the “limited facilities for acquiring
evidence” faced by the Office in obtaining evidence supporting a
prima facie case. See In re Budge Mfg., Inc., 857 F.2d 773,
8 USPQ2d 1259, 1260 - 1261 (Fed. Cir. 1988); In re Squaw
Development Co., 80 USPQ2d 1264, 1271 - 1272 (TTAB 2006).

Serial No. 76596736
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be presumed. In view of this finding, we need not discuss
the other Buffett factors. We hasten to point out,
however, that on a different and more complete record, such
as might be adduced in an inter partes proceeding, we might
arrive at a different result on the issue of whether
applicant’s mark falsely suggests a connection with
L’Oréal.
DECISION: The refusal to register the mark under
Section 2(a) of the Trademark Act is reversed.