Parfums de Coeur, Ltd.v.Fanslly Int’l. Co. Ltd.

Trademark Trial and Appeal Board

Aug 10, 2005

No. 91156614 (T.T.A.B. Aug. 10, 2005)

Mailed:
August 10, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Parfums de Coeur, Ltd.
v.
Fanslly International Co. Ltd.
_____

Opposition No. 91156614
to application Serial No. 78125608
filed on May 2, 2002
_____

Tina H. (Kim) Lee of Davis Wright Tremaine LLP for Parfums
de Coeur, Ltd.

Elizabeth W. King of Arnold & Ferrera, L.L.P. for Fanslly
International Co. Ltd.
______

Before Walters, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant herein, Fanslly International Co. Ltd., seeks
registration on the Principal Register of the mark BODY
FANSLLY (in standard character form), for goods identified
in the application as “cosmetics; skin care products,
namely, non-medicated skin care preparations,” in Class 3.1

1 Serial No. 78125608, filed on May 2, 2002. The application is
based on applicant’s asserted bona fide intention to use the mark
in commerce. See Trademark Act Section 1(b), 15 U.S.C. §1051(b).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91156614
2
Applicant has disclaimed the exclusive right to use BODY
apart from the mark as shown.
Opposer herein, Parfums de Coeur, Ltd., has opposed
registration on the ground that applicant’s mark, as applied
to the goods identified in the application, so resembles the
mark BODY FANTASIES, previously registered2 by opposer for
goods identified in the registration as “women’s fragrances,
namely, perfume, cologne, toilet water; scented body sprays;
personal deodorants; shower gels; body lotions; body
powders; soaps,” as to be likely to cause confusion, to
cause mistake or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant filed an answer by which it denied the
salient allegations of opposer’s Section 2(d) claim.
The evidence of record consists of the pleadings
herein, the file of applicant’s involved application,
certain documentary materials made of record by opposer and
by applicant via their respective notices of reliance, and
the testimony deposition of opposer’s president Mark Laracy
(and the exhibits thereto).3

2 Registration No. 2104321, which issued on October 7, 1997.
Affidavits under Trademark Act Sections 8 and 15 have been
accepted and acknowledged.

3 By its June 17, 2005 interlocutory order (upon applicant’s
motion), the Board has stricken Exhibit 5 to opposer’s
Supplemental Notice of Reliance (consisting of two reports from
Information Resources, Inc.), and those reports shall be given no
consideration. We therefore also disregard the materials
attached to applicant’s brief on the case (consisting of evidence
Opposition No. 91156614
3
The parties have fully briefed the case, but no oral
hearing was requested.
At trial, opposer submitted status and title copies of
its pleaded Registration No. 2104321. The registration is
extant and is owned by opposer. Because opposer has
properly made its pleaded registration of record, and
because opposer’s likelihood of confusion claim is not
frivolous, we find that opposer has established its standing
to oppose registration of applicant’s mark. 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). Moreover, because
opposer’s pleaded registration is of record, Section 2(d)
priority is not an issue in this case as to the mark and
goods covered by said registration. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

of alleged third-party uses of FANTASY marks in connection with
fragrances), which are irrelevant to the extent that they are
offered in support of applicant’s “competency objection” to
opposer’s now-stricken Exhibit 5. In any event, these additional
materials from applicant were not made of record at trial and
therefore are untimely.

Opposition No. 91156614
4
USPQ 563 (CCPA 1973). See also In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, 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). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning first to a comparison of the parties’ goods as
identified in applicant’s application and opposer’s
registration, we find that applicant’s goods, i.e.,
“cosmetics; skin care products, namely, non-medicated skin
care preparations,” and opposer’s goods, i.e., “women’s
fragrances, namely, perfume, cologne, toilet water; scented
body sprays; personal deodorants; shower gels; body lotions;
body powders; soaps,” are highly similar. Indeed, in
certain respects the goods are legally identical, inasmuch
as applicant’s non-medicated skin care preparations legally
encompass opposer’s body lotions and sprays, body powders,
and soaps. Applicant concedes as much at page 8 of its
brief. The second du Pont evidentiary factor thus weighs in
favor of a finding of likelihood of confusion.
There are no restrictions or limitations in either
party’s identification of goods, and we therefore find that
Opposition No. 91156614
5
the parties’ respective goods are or would be marketed in
all normal trade channels for such goods and to all normal
classes of purchasers for such goods. Given the similarity
and/or legal identity of the respective goods, we presume
that the parties’ trade channels and classes of purchasers
are or would be overlapping. Moreover, we find that the
parties’ respective goods are ordinary, inexpensive consumer
goods, which are or would be purchased by ordinary consumers
who would use only ordinary care in purchasing the goods.
For these reasons, we find that the third and fourth du Pont
evidentiary factors weigh in favor of a finding of
likelihood of confusion.
Next, we find that opposer’s BODY FANTASIES mark is
strong, if not famous, in the marketplace. Mr. Laracy’s
unrefuted testimony is that opposer’s BODY FANTASIES
products first came on the market in 1996; that they now are
marketed in some 22,000 retail outlets nationwide, including
chain drug stores and mass market retailers such as WalMart,
K-Mart, Target and Sears; that fifty million units of
opposer’s products are sold annually, with gross sales of
over thirty-five million dollars in 2003 and over forty-two
million dollars in 2002. In the mass market fragrance
category in which opposer competes (a market category which
excludes specialty retailers like Bath and Body Works, Body
Shop, and Victoria’s Secret), opposer’s BODY FANTASIES ranks
Opposition No. 91156614
6
second in market share, behind only Coty. From 1996 through
the end of 2003, opposer has expended nearly thirty-one
million dollars in advertising and promoting its mark, via
network television advertising and in magazines such as
Marie Claire, Seventeen, Teen, YM, People and Shape.
Applicant contends that, notwithstanding opposer’s
apparent success in the marketplace, opposer’s BODY
FANTASIES mark is inherently weak, diluted and descriptive,
and that it therefore is not entitled to a scope of
protection which is broad enough to preclude registration of
applicant’s mark. We are not persuaded by this argument.
First, applicant’s allegation that opposer’s registered
mark is merely descriptive is an unacceptable collateral
attack on the registration in the absence of a counterclaim
for cancellation. Furthermore, we note that opposer’s
pleaded registration is incontestable, and that it therefore
is immune to applicant’s charge that the registered mark is
merely descriptive. We also find, for the following
reasons, that applicant’s evidence fails to support
applicant’s contention that opposer’s BODY FANTASIES mark is
diluted and weak, or deserving of only a narrow scope of
protection.
Applicant has submitted printouts (from the Office’s
TESS database) consisting of mere listings of third-party
marks (in Class 3) which include the words BODY, or FANTASY,
Opposition No. 91156614
7
or the truncated words FAN* and FANTAS*. We have given
these listings no consideration, for the following reasons.
First, it is settled that third-party registrations may
not be made of record merely by listing them; complete plain
copies (even if non-certified) of the registrations
themselves are required. See Raccioppi v. Apogee Inc., 47
USPQ2d 1368, 1370 (TTAB 1998); In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230 (TTAB 1992); and TBMP §704.03(b)(1)(B)(2d ed. rev.
2004). Second, even if applicant had properly made the
third-party registrations of record, they would have had no
probative value under the sixth du Pont evidentiary factor,
i.e., “the number and nature of similar marks in use on
similar goods”. See Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). Third-party
registrations are not evidence of what happens in the
marketplace or that purchasers are aware of the registered
marks. See AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268 (CCPA 1973); Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798
(TTAB 2001). Finally, applicant’s mere listings have little
or no probative value because they reveal only the
application serial numbers, the registration numbers (of
registered marks), and the marks for each item on the list.
The goods covered by each registration are not disclosed in
Opposition No. 91156614
8
these lists of marks; we know only that the registrations
are for goods in Class 3 (a class which covers many other
types of goods, such as household cleaning products, in
addition to cosmetics or fragrances).
Applicant’s notice of reliance also includes (as
Exhibit D) Internet printouts (from Amazon.com) of excerpts
from what appear to be various marketing textbooks and other
materials which applicant asserts are available to the
general public. Applicant argues that these sources show
that the evocation of “fantasy” is a common marketing motif
and concept used to sell products, especially in the
cosmetics and beauty field. However, even assuming (hearsay
aside) that the assertions made in these excerpts are true,
i.e., that a “fantasy” motif is commonly used as a marketing
tool in this field, and assuming that these documents are of
the type which properly may be introduced via notice of
reliance, we find that these book excerpts on this subject
are entitled to little or no weight. There is no evidence
that the relevant purchasers of applicant’s and opposer’s
goods, i.e., ordinary consumers, are familiar with these
Internet book excerpts submitted by applicant.4 Likewise,

4 The Amazon.com excerpts are from books entitled International
Marketing Research, 2d; Essential Oils: Analysis by Capillary Gas
Chromatography and Carbon 13-NMR Spectroscopy; Media Research
Techniques; Advertising, the Uneasy Persuasion: Its Dubious
Impact on American Society; Can’t Buy My Love: How Advertising
Changes the Way We Think and Feel; Escape Attempts: The Theory
and Practice of Resistance to Everyday Life; and Representing
Women: Myths of Femininity in the Popular Media.
Opposition No. 91156614
9
there is no evidence that the relevant purchasers are aware
at all that merchandisers use a “fantasy” marketing motif,
or that, even assuming such familiarity, this marketing
motif would have any effect on the consumer’s ability to
recognize opposer’s BODY FANTASIES as a trademark for
opposer’s goods. Finally, none of applicant’s textbook
evidence shows that FANTASY is commonly used in trademarks
in the beauty or cosmetics field.
In short, we are not persuaded by applicant’s
contention that opposer’s mark is weak or entitled to a
narrow scope of protection. Rather, we find that opposer’s
mark is a strong, well-known mark that is suggestive, if not
arbitrary, as applied to opposer’s goods.
We turn now to what appears to be the essence of
applicant’s argument in support of registration of its mark,
i.e., that its mark BODY FANSLLY is so dissimilar to
opposer’s BODY FANTASIES mark that confusion is unlikely,
notwithstanding the similarity of the goods, the similarity
of the trade channels and classes of purchasers for the
goods, and notwithstanding any strength which might be
accorded to opposer’s mark.
Under the first du Pont factor, we must determine
whether applicant’s mark, BODY FANSLLY, and opposer’s mark,
BODY FANTASIES, are similar or dissimilar when compared in
their entireties in terms of appearance, sound, connotation
Opposition No. 91156614
10
and commercial impression. We make this determination in
accordance with the following principles. 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 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 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). Furthermore, although the marks at
issue must be considered in their entireties, 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).
Finally, in cases such as this, where the applicant’s goods
are legally identical to the opposer’s goods, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Opposition No. 91156614
11
In terms of appearance, we find that applicant’s and
opposer’s respective marks are similar to the extent that
they are both composed of two words, i.e., the word BODY
followed by a word which begins with the letters FAN.
FANTASIES and FANSLLY obviously look different in their
entireties. On balance, we find that the points of
similarity between the marks outweigh the points of
dissimilarity, and that when the marks are compared in their
entireties, they are more similar than dissimilar.
In terms of sound, we find that the marks are similar.
The word BODY sounds the same in each of the marks.
FANTASIES and FANSLLY also sound similar to each other. The
first syllable of FANTASIES and FANSLLY is “FAN.” The
letter “S” appears in the middle of each mark, and the “S”
is followed by a long “E” sound. We are not persuaded by
applicant’s argument that the marks are dissimilar because
FANTASIES in opposer’s mark is in the plural, while FANSLLY
in applicant’s mark appears to be in the singular.
Finally with respect to the comparison of the parties’
marks in terms of sound, we note Mr. Laracy’s unrebutted
testimony asserting that purchasers often learn about
fragrances and related cosmetic products, and make their
decisions to purchase such products, by word-of-mouth
advertising:

Opposition No. 91156614
12
… one of the ways a woman learns about a new
fragrance is smelling it on another woman. And
like Betsy may be wearing Body Fantasies fresh
white musk and Suzy maybe sitting next to her
and say ‘Boy, you smell great, what are you
wearing?’ And back comes the answer, ‘Body
Fantasies.’ So it’s a verbal communication.

(Laracy Depo. at 79-80.) He later testified again on this
point as follows:

Q. Mr. Laracy, amongst the typical consumer
who purchases a Body Fantasies product, how is
amongst them the product further advertised or
promoted?

A. Word of mouth.

Q. So what is your concern with the Body
Fanslly trademark put in by applicant here?

A. Well, I just think when a woman tells
another woman – when they talk about a
fragrance, I think it’s very easy to confuse
Body Fantasies and Body Fanslly.

(Laracy Depo. at 105.) We agree, and find that the two
marks at issue, although not identical in terms of sound,
nonetheless are highly similar. Of course, there is no
“correct” pronunciation of a trademark. But it is entirely
reasonable to assume, as Mr. Laracy testified, that
purchasers of the goods are likely to confuse these two
marks aurally. BODY FANTASIES is likely be elided into, and
heard as, BODY FANSLLY, and vice versa.
Next, we must compare the marks in terms of their
meanings. BODY means the same thing in both marks, i.e.,
Opposition No. 91156614
13
that the products are designed for use on one’s body. The
word FANTASIES, as applied to opposer’s goods, suggestively
connotes that the products will evoke a fantastical or
fantasized fragrance experience when they are applied to
one’s body.
FANSLLY, the second word of applicant’s mark, is a
coined or arbitrary word which would have no meaning or
significance to consumers in the United States. Applicant
contends that FANSLLY is a variation on the transliteration
of the first two characters of the ten Chinese characters
which make up applicant’s company name. Applicant submitted
(as Exhibit G to its notice of reliance) an affidavit from
an English-Chinese translation expert (Robin Feng of Feng’s
Language Services) which includes a translation certificate
and a transliteration certificate pertaining to applicant’s
mark. The “Certificate of Translation” states, in relevant
part, that applicant’s Chinese company name is depicted, in
Chinese, as ten Chinese ideographic characters, the first
two of which are translated as “fragrance and beauty.” The
Certificate of Transliteration states, inter alia, that “the
phonetic transliteration of the first two Chinese characters
of the company name [reproduction of symbols omitted here]
sounds like ‘Fan lly’ in English.”
Not to be outdone, opposer’s Supplemental Notice of
Reliance includes, as Exhibit No. 7, an affidavit from its
Opposition No. 91156614
14
own Chinese language expert, Harry Ping Dai. In
transliterating the first two Chinese characters of
applicant’s Chinese name in accordance with various
transliteration conventions, he concludes that the two
characters transliterate as “fenli,” as “fenlih,” or as
“hunle.” He concludes his affidavit by stating that “there
is no evidence, according to any Mandarin transcription
system, that [the first two Chinese characters in
applicant’s Chinese name] could be spelled as ‘Fanslly.’”
We find that English-speaking consumers in the United
States would not be aware that FANSLLY is based on a
transliteration of applicant’s company name, and that they
would view the mark as a coined or arbitrary term. Even
consumers familiar with the Chinese language would view the
word as arbitrary or coined, since it is not a direct
transliteration of the first two characters of applicant
company’s name. Applicant’s expert says that the characters
are translated as “fan lly,” and opposer’s expert says that
the characters are translated as “fenli,”, “fenlih” or
“hunle.”5 In none of these transliterations does the letter

5 There is no stipulation in the record which would allow the
parties to submit, by means of an affidavit via notice of
reliance, what essentially is expert language testimony.
However, because both parties have done so and neither has
objected to the other party’s use of affidavits in this manner,
we find that these affidavits, and the evidence they contain, are
of record in this case, and we shall give them their due
probative weight.

Opposition No. 91156614
15
“S” appear. The reason applicant has inserted the “S” into
the middle of the second word of its mark is not apparent on
this record, but the effect of such insertion of the “S” is
that it makes applicant’s mark look and sound more like
opposer’s word FANTASIES than it otherwise would without the
“S.”
Thus, the meaning of applicant’s mark BODY FANSLLY
would not be known to consumers, even those who understand
Chinese. Therefore, consumers in this country cannot
utilize any such meaning as a means of distinguishing
applicant’s BODY FANSLLY mark from opposer’s BODY FANTASIES
mark. Consumers attempting to distinguish the two marks
must do so on the basis of the appearance and sound of the
marks, and, as we have discussed above, the marks are more
similar than dissimilar in terms of appearance and sound.
We find that the similarities between the marks in
terms of their appearance and sound, especially in terms of
sound, outweigh the apparent dissimilarity between the
marks’ meanings. For these reasons, we find that the
overall commercial impressions of the marks are similar
rather than dissimilar.
We certainly cannot conclude, as applicant would have
us conclude, that BODY FANTASIES and BODY FANSLLY are so
dissimilar that the dissimilarity of the marks under the
first du Pont factor outweighs all of the evidence
Opposition No. 91156614
16
pertaining to the other du Pont factors which support a
finding of likelihood of confusion. In other words, this is
not a case like Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991).
As noted above, because the goods identified in
applicant’s application are highly similar to, and in some
instances legally identical to, the goods identified in
opposer’s registration, the degree of similarity between the
two marks which is necessary to support a finding of
likelihood of confusion declines. See Century 21 Real
Estate Corp. v. Century Life of America, supra. When
applied to similar and identical goods, the marks BODY
FANTASIES and BODY FANSLLY are sufficiently similar that
confusion is likely to occur. Furthermore, as discussed
above, the evidence of record does not support applicant’s
other main argument, i.e., that opposer’s BODY FANTASIES
mark is weak and entitled to a narrowed scope of protection.
Rather, we find on this record that BODY FANTASIES is a
strong mark, and that the scope of protection to which it is
entitled is broad enough to preclude registration of
applicant’s BODY FANSLLY mark for the similar and/or legally
identical goods identified in applicant’s application.
On the basis of the factual findings discussed above,
we find that confusion is likely to occur if applicant’s
Opposition No. 91156614
17
BODY FANSLLY mark were to be used on or in connection with
the goods identified in applicant’s application. We have
considered all of applicant’s arguments to the contrary
(including arguments not specifically addressed in this
opinion), but are not persuaded. To the extent that any
doubts might exist as to the correctness of our likelihood
of confusion determination, we resolve such doubts against
applicant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).

Decision: The opposition is sustained.