Oxycal Labora-tories, Inc.v.Malibu 2000, Inc.

Trademark Trial and Appeal Board

Mar 25, 2003

No. 91116599 (T.T.A.B. Mar. 25, 2003)

Mailed: March 25, 2003
Paper No. 27
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Oxycal Laboratories, Inc.
v.
Malibu 2000, Inc.
_____
Opposition No. 116,599
to application Serial No. 75/500,579
filed on June 11, 1998
_____
McPherson Moore of Polster, Lieder, Woodruff & Lucchesi,
L. C. for Oxycal Laboratories, Inc.
Timothy N. Thomas of Woodard, Emhardt, Naughton, Moriarty &
McNett for Malibu 2000, Inc.
______
Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Malibu 2000, Inc. has filed an application to register
the mark EC MODE in typed capital letters for “cosmetics
using vitamins E and/or C for the hair, scalp and skin;
namely hair shampoos, hair conditioners, hair gels, hair
clarifiers, hair reconstructors, hair shiners, hair balms,
hair sprays, hair waving preparation, scalp tonics, scalp
shampoos, scalp conditioners, facial cleansers, facial
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 116,599
2
creams, facial gels, facial masques, body shampoos, body
lotions, skin moisturizers and body oils” in class 3; and
“vitamin supplements” in class 5.1
Registration has been opposed under Section 2(d) of the
Trademark Act by Oxycal Laboratories, Inc. In support of
its claim of priority and likelihood of confusion, opposer
asserts that for a number of years it has been engaged in
the manufacture and sale of vitamins and mineral supplements
and cosmetics through one or more licensees; that it is the
owner of the previously used and registered “EC Stylized”
marks, respectively shown below,
for “vitamin and mineral supplement;”2 and
for “cosmetic preparations, namely skin conditioning cream
1 Serial No. 75/500,579 filed June 11, 1998 alleging first use
and first use in commerce as of March 19, 1998.
2 Registration No. 1,577,263 issued January 16, 1990; renewed.
Opposition No. 116,599
3
containing vitamin C”;3 that it has used both of these marks
since prior to applicant’s alleged date of first use; that
it has expended substantial amounts of money, time and
effort in advertising, promoting and popularizing these
marks; that the marks have become well and favorably known;
and that applicant’s mark, when used in connection with
applicant’s identified goods, so resembles opposer’s marks
as to be likely to cause confusion.
Applicant, in its answer, has denied the salient
allegations of the likelihood of confusion claim.
The Record
The record consists of the file of the involved
application; and the testimony depositions, with exhibits,
of opposer’s witness Gaye Morgan, and applicant’s witness
Tom Porter. In addition, applicant submitted a notice of
reliance on opposer’s response to applicant’s document
request No. 9;4 and the file wrappers of opposer’s two
pleaded registrations.
3 Registration No. 1,988,733 issued July 23, 1996; affidavits
under Section 8 and 15 accepted and acknowledged, respectively.
This registration contains the following description: “The mark
consists of the stylized letters “EC”; and the following
statement: “The stippling shown is for shading purposes.”
4 While a response to a document request generally is not proper
subject matter for a notice of reliance, the parties have treated
the response as forming part of the record in this case, and thus
we consider it to have, in effect, been stipulated into evidence.
Opposition No. 116,599
4
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief. An oral hearing was not
requested.
The Parties
Opposer took the testimony of Gaye Morgan, vice-
president of Inter-Cal Corporation. Ms. Morgan testified
that Inter-Cal is a wholly owned subsidiary of opposer
Oxycal Laboratories, Inc. According to Ms. Morgan, opposer
manufactures and develops patented and proprietary products
that it sells at wholesale to approximately 250 licensees.
The licensees in turn produce vitamin and mineral
supplements and cosmetics using opposer’s products alone or
in conjunction with other ingredients for sale to retail
customers. All licensees are required to include opposer’s
marks on all product labels that consist of or contain
opposer’s products. The record shows that opposer’s
stylized “EC” marks are used on its brand of vitamin C that
is known as ESTER-C. The ESTER-C brand of vitamin C is
marketed as a vitamin and mineral supplement for both humans
and animals and it is used in cosmetics. Since opposer’s
introduction of its ESTER-C vitamin C in 1985, opposer’s
sales have increased significantly. In 1995, 1996 and 1997
opposer’s subsidiary Inter-Cal received the Gold Medal Vity
award for the ESTER-C brand as the top-selling vitamin
supplement in the United States. In addition, opposer and
Opposition No. 116,599
5
its licensees have spent substantial sums advertising and
promoting their products.5 Ms. Morgan testified that
opposer and its licensees have advertised and promoted their
products by way of “hundreds of thousands” of magazine
advertisements, product brochures, numerous direct mailings,
coupon advertisements, videos, “shelf talkers,” and
promotional items. Also, opposer appears at 5-7 trade shows
each year and it has obtained testimonials from a number of
well-known celebrities and has used these in its
advertisements. The ESTER-C brand products of opposer and
its licensees are sold in 98% of the health food stores in
the United States and generally retail for under $20.00.
Applicant took the testimony of its president Tom
Porter who testified that in 1997 applicant adopted the mark
“EC4U2 Wrinkle-Less” to identify a line of cosmetics it
developed. According to Mr. Porter, applicant selected the
“EC” portion of its mark to indicate that applicant’s
products are “easy” for customers to use. Mr. Porter
testified that the “EC4U2 Wrinkle-Less” name was simply too
cumbersome, and in order to “narrow the focus” applicant
adopted the mark EC MODE in the spring of 1998. Mr. Porter
testified that the term “MODE” was selected
5 Opposer and its licensees’ sales and advertising figures were
deemed confidential information and were introduced into the
record pursuant to a protective order.
Opposition No. 116,599
6
because applicant used the expression “in the mode” in
marketing its goods. Applicant currently markets a full
line of hair, scalp, and skin care products. Approximately
95% of applicant’s products are sold in beauty salons. The
remainder of applicant’s products are sold at its web site
and by medical professionals. Applicant’s products are not
currently sold through health food stores. Applicant
advertises in trade publications such as Modern Salon,
Beauty Beat, and Salon News. The actress Jane Seymour is
applicant’s international spokesperson and she endorses
applicant’s products and appears in advertisements.
Applicant’s products retail for between $10.00 and $15.00.
Preliminary matters
Before considering the merits of this case, we must
discuss two preliminary matters. The first concerns
opposer’s request that we not consider an argument in
applicant’s brief, specifically, applicant’s argument that
opposer is estopped from arguing that there is a likelihood
of confusion in this case because in the application which
matured into opposer’s pleaded Registration No. 1,988,733
opposer argued that there was no likelihood of confusion
between its mark and a third-party “EC” mark cited by the
Examining Attorney. Opposer contends that applicant is
precluded from presenting any such arguments concerning any
third-party marks because in response to opposer’s
Opposition No. 116,599
7
interrogatory asking applicant to identify any third-parry
marks on which applicant intended to rely, applicant
responded that it had not decided whether it would be
necessary to rely on any such marks, and applicant did not
supplement this response. In making its argument, however,
applicant has not so much “relied” on a third-party mark,
but rather is attempting to rely on a position taken by
opposer during the prosecution of the application that
matured into opposer’s pleaded Registration No. 1,988,733.
A prior inconsistent position on the issue of likelihood of
confusion is admissible, but not binding on the Board, since
such prior arguments in an ex parte context are relevant “as
merely illuminative of shade and tone in the total picture,”
but do not “relieve the decision maker of the burden of
reaching his own conclusion on the entire record.”
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Thus, while we
will consider applicant’s argument with respect to opposer’s
prior position, our determination of whether there is a
likelihood of confusion in this case is based on the facts
and record herein.
The second matter concerns opposer’s objections to the
testimony of applicant’s witness, Mr. Porter, with respect
to his opinion that opposer’s various exhibits do not
evidence use of the letters “EC” per se as a trademark.
Opposition No. 116,599
8
Suffice it to say that such opinion testimony is not binding
on the Board and merits very little weight in our
determination of whether opposer may rely on common law
rights in the letters “EC” per se.
Analysis
Priority
With respect to the issue of priority, opposer has
relied upon certified copies of its pleaded registrations
for the marks shown below which show that such registrations
are subsisting and owned by opposer.
Thus, insofar as opposer’s registered marks are concerned,
priority is not in issue. King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). However, opposer also argues that it has common law
rights in the letters “EC” per se. In particular, opposer
argues in its main brief that it has “strong common law
rights in the alphabetic mark EC in both stylized and non-
stylized form (i.e. uppercase and lowercase block letters)”
and that applicant has appropriated “the entirety of
[opposer’s] distinctive EC trademark.” However, opposer did
not plead common law rights in the letters “EC” per se in
the notice of opposition. Opposer only pleaded ownership of
Opposition No. 116,599
9
its registered “stylized EC” marks. Moreover, opposer did
not seek to amend the notice of opposition to plead common
law rights in the letters “EC” per se. Further, the issue
of whether opposer has common law rights in the letters “EC”
per se was not tried by the express or implied consent of
applicant. With respect to express consent, applicant, in
its brief on the case, has specifically objected to
opposer’s reliance on common law rights in the letters “EC”
per se. With respect to implied consent, this can only be
found where the nonoffering party (1) raised no objection to
the introduction of evidence on the issue, and (2) was
fairly appraised that the evidence was being offered in
support of the issue. See TBMP Section 507.03(b) and cases
cited therein. In this case, there is no testimony or other
evidence from which we can say that applicant should have
been on notice that opposer was asserting common law rights
in the letters “EC” per se. So as to be perfectly clear, we
recognize that opposer’s witness, Ms. Morgan, during her
testimony deposition, often referred to opposer’s marks as
the “EC marks.” Moreover, a review of opposer’s exhibits
herein reveals the following types of uses of the letters
“EC” on ESTER-C products: “The E-C logo and Ester-C are
licensed trademarks of InterCal Corporation….; and “Look for
the e-c logo.” However, this was certainly not sufficient
Opposition No. 116,599
10
to place applicant on notice that opposer was claiming
common law rights in the letters “EC” per se.
Further, the fact that opposer has described the mark
in Registration No. 1,988,733 as the “stylized letters EC”
is not sufficient to apprise applicant that opposer was
claiming common law rights in the letters “EC” per se.
Thus, for purposes of priority, opposer is entitled to rely
only on its registered stylized “EC” marks.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all the probative facts in
evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and the differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin our analysis by determining whether the goods
of the parties are similar. In this regard, we observe that
there is substantial overlap in the goods identified in
applicant’s application and opposer’s pleaded registrations.
Applicant’s “vitamin supplements” are identical and closely
Opposition No. 116,599
11
related to the “vitamin and mineral supplement” identified
in opposer’s Registration No. 1,577,623. Also, applicant’s
“cosmetics using vitamins E and/or C for the hair, scalp and
skin” are identical and closely related to the “cosmetic
preparations, namely skin cream containing vitamin C”
identified in opposer’s Registration No. 1,988,733.
Further, both opposer’s and applicant’s identifications of
goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We must
presume, for purposes of our likelihood of confusion
analysis, that the goods of applicant and opposer are sold
in all of the normal channels of trade to all of the usual
classes of purchasers for goods of the type identified. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). In other words, we conclude
that the channels of trade and class of purchasers of the
parties’ goods are the same.
Next, we will consider oppposer’s argument that its
marks are well known in their field. As we have indicated,
the record shows substantial sales of ESTER-C brand products
that bear opposer’s stylized “EC” registered marks. In this
regard, we note that ESTER-C was the number one selling
vitamin product in 1995, 1996 and 1997. In addition, the
record shows that opposer and its licensees have expended
large sums of money advertising and promoting ESTER-C brand
Opposition No. 116,599
12
products. They have used virtually every form of
advertising and promotion, including obtaining testimonials
from well-known celebrities and using these testimonials in
their advertisements. A review of opposer’s exhibits
reveals that opposer’s registered marks are prominently
displayed on the various advertising and promotional
materials. We find, therefore, that opposer’s two
registered stylized “EC” marks are indeed well known, and
thus are to be accorded a broad scope of protection.
The next du Pont factor we consider is “the nature and
extent of any actual confusion.” Applicant argues that
despite three years of contemporaneous use, there have been
no instances of actual confusion. Applicant’s president,
Tom Porter, testified that he knew of no instances of actual
confusion. Also, opposer, in response to applicant’s
document request No. 9, stated that it was unaware of any
documents and/or things that were probative of the nature
and extent of any likelihood of confusion. However, there
is no evidence that either party has a procedure in place
for reporting or recording instances of actual confusion.
Also, while we recognize that the parties’ goods are sold
throughout the United States, the parties have focused their
efforts in different marketing channels, with products
bearing opposer’s marks being sold primarily in health food
stores, and products bearing applicant’s mark being sold
Opposition No. 116,599
13
primarily in hair salons. In addition, at the time of
applicant’s testimony, it had used its mark for only about
three years. Thus, we cannot conclude from this record that
the length of time and the circumstances under which the
parties have concurrently marketed their products are such
that the absence of actual confusion is entitled to
significant probative weight in our likelihood of confusion
analysis.
Next, we turn to a determination of what we find to be
the key likelihood of confusion factor in this case,6 i.e.,
whether applicant’s mark and opposer’s marks, when compared
in their entireties in terms of appearance, sound, and
connotation, are similar or dissimilar in their overall
commercial impressions. The test for confusing similarity
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 offered under the respective marks is likely to
result. The focus is on the recollection of the average
6 The Court of Appeals for the Federal Circuit has held that in a
particular case, a single du Pont factor may be dispositive. See
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d
1142, 1145 (Fed. Cir. 1991); and Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-1461
(Fed. Cir. 1998).
Opposition No. 116,599
14
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). The marks at
issue may not be dissected but rather must be considered in
their entireties. However, it is not improper to consider
the component parts of the respective marks as a preliminary
step in the analysis of the similarity of the marks as a
whole. Likewise, it is well settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Moreover, where, as in the present case,
the marks would appear on identical goods, the degree of
similarity between the marks which is necessary to support a
finding of likelihood of confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ 1698 (Fed. Cir. 1992).
We begin our analysis of the marks by noting, as
explained previously, that opposer is entitled to rely only
on its registered stylized “EC” marks shown below.
Opposition No. 116,599
15
The Court of Appeals for the Federal Circuit, in In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239,
1240 (Fed. Cir. 1990), held that use of the marks “K+” and
design and “K+EFF” for identical goods (a dietary potassium
supplement) was not likely to cause confusion, noting that:
The nature of stylized letter marks is that
they partake of both visual and oral indicia,
and both must be weighed in the context in
which they occur. See, e.g., Georgia-Pacific
Corp. v, Great Plains Bag Co., 614 F.2d 757,
760, 204 USPQ 697, 699 (CCPA 1980):
It must be remembered that [registrant’s]
trademark consists of highly stylized
letters and is therefore in the gray
region between pure design marks which
cannot be vocalized and word marks which
clearly are intended to be.
In Georgia-Pacific the court observed that
even if the letter portion of a design mark
could be vocalized, that was not dispositive
of whether there would be a likelihood of
confusion. A design is viewed not spoken,
and a stylized letter design cannot be
treated simply as a word mark. (citation
omitted).
Thus, in comparing the marks in this case, we must
consider both the “visual and oral indicia” of opposer’s
marks. In doing so, we find that the commercial impression
created by opposer’s stylized “EC” marks is substantially
different from the commercial impression created by
applicant’s mark EC MODE. Opposer’s marks consist of a bold
letter “C” encircling the letter “E,” which could be
perceived by consumers as “CE.” In opposer’s Registration
No. 1,988,733, in particular, the letters “EC” contain
Opposition No. 116,599
16
shading that gives this mark an even more distinctive
appearance. Applicant’s mark, on the other hand, contains
the additional word “MODE” which is not present in opposer’s
mark. Although opposer contends that the word “mode” is
descriptive of applicant’s goods, and thus should be given
less weight when comparing the parties’ marks, opposer
offered no evidence to support this contention. This case
is easily distinguished from Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000), relied on by
opposer. In that case, both of the involved marks, LASER
and LASERSWING, were in typed capital letters. In addition,
the respondent admitted that the word “swing” is commonly
used when referring to golf clubs, and he testified that the
mark LASERSWING seemed logical for his particular product,
“a swinging club.” The Court noted that “[t]hese
statements, which Cunningham does not deny making, recognize
the descriptive nature of the component ‘swing.’”
Cunningham, 55 USPQ2d 1846. This is in contrast to the case
now before us where opposer’s marks consist of stylized
letters while applicant’s mark is in typed capital letters;
and there are no statements by applicant or any other
evidence which establishes that MODE is descriptive of
cosmetics and/or vitamins.
In finding that the marks are dissimilar, we have
considered the fact that applicant seeks to register the
Opposition No. 116,599
17
mark EC MODE in typed capital letters. This means that
applicant’s application is not limited to the mark depicted
in any special form or lettering. See Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) and
Phillips Petroleum Co. v. C.J. Webb, Inc., 422 F.2d 1376,
170 USPQ 35, 35 (CCPA 1971). Relying on these cases,
opposer maintains that applicant’s EC MODE mark in typed
capital letters must be considered to encompass the
following forms:
M O D E M O D E
However, as the Board stated in Jockey International
Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1235 (TTAB
1992):
To be perfectly clear, we are not suggesting that
because an application or registration depicts a
mark in typed capital letters that therefore the
word mark must be considered in all possible forms
no matter how extensively stylized. Rather, we
are simply indicating that when a drawing in an
application or registration depicts a word mark in
typed capital letters, this Board--in deciding
the issue of likelihood of confusion --“must
consider all reasonable manners” in which the
word mark could be depicted. INB National Bank v.
Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
Opposition No. 116,599
18
We do not consider either of the above forms to be
reasonable manners of depicting applicant’s mark, especially
since there is no evidence that manufacturers and retailers
of products of the type involved in this case commonly
depict their marks in such manners, i.e., with encircled
letters and/or this form of distinctive shading.
Opposer has also argued that applicant adopted its mark
either in bad faith or with reckless disregard of opposer’s
prior rights in opposer’s marks, inasmuch as applicant had
actual knowledge of opposer’s marks prior to applicant’s
adoption of its own mark by way of a trademark search
report. However, mere knowledge of the existence of the
prior user does not, by itself, constitute bad faith. Also,
we have no reason to reject applicant’s explanation
regarding how it adopted its EC MODE mark. There is nothing
in this record to indicate that the testimony of applicant’s
witness, Mr. Porter, concerning this matter was less than
truthful. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 [“Recot asks us, as it asked the Board, to
reject Becton’s [mark origin] explanation as far-fetched.
We decline Recot’s invitation. Absent a showing that
Becton’s explanation is untrue, Recot fails to bolster its
claim to a likelihood of confusion between the marks.”]
Further, the fact that applicant has depicted its mark such
that “EC” and “MODE” are on separate lines in the manner
Opposition No. 116,599
19
shown below is not evidence of an intent to trade on
opposer’s good will.
Finally, with respect to the parties’ marks, we observe
that the letters “C” and “E” are descriptive of the kinds of
goods involved in this case. The record shows that
opposer’s ESTER-C is a brand of vitamin C and that
applicant’s cosmetics contain vitamins C and E. Thus,
although opposer’s stylized “EC” marks are entitled to a
broad scope of protection, this does not extend to any and
all uses of the letters “C” and “E” for vitamins and
cosmetics.
In summary, after careful consideration of the evidence
of record with respect to the relevant du Pont factors and
the parties’ arguments with respect thereto, we conclude
that there is no likelihood of confusion in this case. That
Opposition No. 116,599
20
is, notwithstanding the fact that opposer’s marks are well
known, and that the parties are using their respective marks
on identical and related goods, we find that the marks are
too dissimilar in their commercial impression to support a
determination that confusion is likely.
Decision: The opposition is dismissed.