Paco Rabanne Parfums, S. A.v.Donald W. Magyar

Trademark Trial and Appeal Board

Jun 18, 1997

OPP (T.T.A.B. Jun. 18, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
Paper No. 29
TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Paco Rabanne Parfums, S.A.
v.
Donald W. Magyar
_____
Opposition No. 93,787
to application Serial No. 74/334,463
filed on November 25, 1992
_____
Michael J. Striker of Striker, Striker & Stenby for Paco
Rabanne Parfums, S.A.
Edward F. McHale of McHale & Slavin for Donald W. Magyar.
______
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Donald W. Magyar to
register the mark SEXCESS for "cosmetics, namely,
perfumery."1
Registration has been opposed by Paco Rabanne Parfums,
S.A.2 under Section 2(d) of the Act on the ground that

1Application Serial No. 74/334,463, filed November 25, 1992,
alleging a bona fide intention to use the mark in commerce.
2The original opposition was filed by Arambel, S.A. When the
pleaded registration was assigned to Paco Rabanne Parfums, S.A.,
Opposition No. 93,787
2
applicant's mark, when applied to applicant's goods, so
resembles opposer's previously used and registered mark
EXCESS for "perfume, personal deodorants, body soap, body
oils, lotions and powder, bath gel and salt, hair shampoo,
aftershave cologne, eau de toilette and lipstick, eyeliner,
eyeshadow, mascara and blush"3 as to be likely to cause
confusion, or to cause mistake, or to deceive.
Applicant, in his answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony (with related
exhibits) taken by each party; and a status and title copy
of opposer's pleaded registration introduced by opposer's
notice of reliance.4 Both parties filed briefs on the case.
An oral hearing was not requested.
Opposer has made of record, as noted above, a status
and title copy of its pleaded registration for the mark
EXCESS. Thus, there is no issue with respect to opposer's
priority. King Candy Co., Inc. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

the two entities were joined as party plaintiffs. Paco Rabanne
Parfums, S.A. is hereby substituted as the party plaintiff in
this proceeding. Fed. R. Civ. P. 25(c).
3Registration No. 1,848,910, issued August 9, 1994. The
assignment to the present opposer is recorded in the Office at
reel 1261, frame 0405.
4Applicant has referred to a dictionary definition of the term
"excess." Although a copy of the dictionary listing was not
submitted, we take judicial notice of this evidence and, thus,
have considered it in reaching our decision. The term is
defined as "action or conduct which goes beyond the usual,
reasonable or lawful limit; lack of moderation, intemperance,
overindulgence."
Opposition No. 93,787
3
A determination of likelihood of confusion requires an
analysis of the relevant factors listed in In re E.I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis under Section 2(d)
of the Act, two key considerations are the similarities
between the marks and the similarities between the goods.
In the present case, as conceded by applicant (brief, p. 3),
the goods are legally identical. Indeed, opposer's and
applicant's perfume are assumed to travel in the same
channels of trade and to be bought by the same classes of
purchasers.
In view of the legal identity between the goods, we
turn to focus our attention, as have the parties, on the
crux of the controversy, that is, the
similarities/dissimilarities between the marks EXCESS and
SEXCESS. The Board notes, at the outset, that when marks
appear on identical goods, as here, the degree of similarity
between the marks necessary to support a conclusion of
likelihood of confusion declines. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). Further, in considering the
marks, we have kept in mind the normal fallibility of human
memory over time and that the average consumer retains a
general rather than a specific recollection of trademarks
encountered in the marketplace.
Applicant took the testimony of Dr. Joan Young, a
retired college professor of English. Dr. Young's training
Opposition No. 93,787
4
included a year of graduate study in English, and applicant
has presented her as a language expert. Dr. Young testified
as to some of the differences between the marks. However,
certain other portions of her quite candid testimony are
revealing. Dr. Young pointed out that applicant's mark is,
in linguistics terminology, a "portmanteau" word, that is, a
blended word formed from other words. She gave the example
of "brunch" which is a blend of the words "breakfast" and
"lunch." Although blended words typically are formed from
the parts of other words, applicant's mark, according to Dr.
Young, is formed from two entire words, namely "sex" and
"excess." Dr. Young also conceded that an innate
characteristic of languages is for "the last sound of one
word [to] be slid into the next." In this connection, she
acknowledged that a phrase comprising the word "excess"
preceded by a word ending with the "ess" sound (such as,
"across" or "likes") could be heard as "sexcess" (compare
"She likes Excess." versus "She likes Sexcess.").
We find that the marks EXCESS and SEXCESS, when applied
to identical and/or closely related cosmetics and
toiletries, are likely to cause confusion. Simply put, the
similarities between the marks outweigh the differences.
The marks look and sound alike. As acknowledged even by
applicant's expert, applicant's mark is a blend of "sex" and
"excess." And, while the marks may have slightly different
meanings, it is likely that consumers, upon encountering the
marks EXCESS and SEXCESS on perfume, will ascribe somewhat
Opposition No. 93,787
5
similar meanings to the marks, given the general practice of
marketing perfume as enhancing the sexual allure of the
person wearing the perfume.
Opposer contends that its product sold under the mark
EXCESS "has been actively promoted and has enjoyed enormous
commercial success." Indeed, the testimony of Robert
McCormick (vice president of a distributor in the United
States of opposer's products) indicates that opposer has
promoted its products in a variety of ways throughout the
country and that opposer has enjoyed success with its
products. However, to the extent that opposer would urge us
to conclude that its mark is famous, the evidence falls
short of establishing that the mark has achieved the status
of a "famous" mark. Compare: Kenner Parker Toys v. Rose
Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).
We conclude that consumers familiar with opposer's
perfume and related cosmetic products sold under its mark
EXCESS would be likely to believe, upon encountering
applicant's mark SEXCESS for perfume, that the goods
originated with or were somehow associated with or sponsored
by the same entity.
Decision: The opposition is sustained and registration
to applicant is refused.
E. J. Seeherman
Opposition No. 93,787
6
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board