St. Tropez, Inc.

Trademark Trial and Appeal Board

Aug 18, 2004

No. 76069661 (T.T.A.B. Aug. 18, 2004)

Hearing: Mailed:
April 28, 2004 August 18, 2004
Seeherman
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re St. Tropez, Inc.
________
Serial No. 76069661
_______
Marvin H. Kleinberg of Kleinberg & Lerner, LLP for St.
Tropez, Inc.
Andrea Koyner Nadelman, Trademark Examining Attorney, Law
Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
St. Tropez seeks to register, under the provisions of
Section 2(f) of the Trademark Act, the mark ST.TROPEZ and
design, as shown below, for the following goods, as
amended:
Sun tanning preparations, namely, sun
tan gel, sun tan lotion and sun tan
oil, skin gels, oils and lotions for
accelerating tans; sun screening
preparations, sun tan accelerator
products and preparations, skin and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 76069661
2
body creams, skin and body lotions and
non-medicated skin and body balms.1
The application is based on Section 1(a) of the Trademark
Act, asserting first use and first use in interstate
commerce as early as January 15, 1993. The application is
also based on Section 44(e) of the Trademark Act, based on
applicant's ownership of two UK registrations and a
registration in the Office for Harmonization in the
Internal Market (Community Trademark).2
1 Application Serial No. 76069661, filed June 13, 2000. The
original application identified the goods as "soaps; perfumery;
essential oils; cosmetics; hair lotions; hair care preparations;
shampoos; dentifrices; toothpastes; sun tanning preparations;
sunscreening preparations; sun tan accelerator products and
preparations; anti-perspirants; deodorants for personal use;
creams, lotions and balms for the skin and for the body; hand
creams; dermatological preparations and substances." After
interim amendments to address issues of indefiniteness, applicant
amended its application to those listed above with a request for
remand filed at the same time as its appeal brief.
2 In the Office action mailed October 4, 2001, the Examining
Attorney stated that the application was filed on the basis of
Section 1(b) (intent-to-use) and Section 44(e). Apparently the
Examining Attorney made this statement because applicant had
previously submitted a declaration that it had a bona fide
intention to use the mark in commerce. This statement was in
turn made in response to the original Examining Attorney's
Serial No. 76069661
3
Registration has been finally refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
the ground that applicant's mark so resembles the mark
TROPEZ, in the stylized form shown below, and previously
registered for "cosmetics, namely, face powder; lipstick;
mascara; rouge; eyeshadow; lip covering; lip gloss; face
blusher powder; highlighter rouge; liquid facial make-up;
nail polish; nail hardener; nail polish remover; rouge
blusher; eyebrow, eyeliner and lipliner pencils,"3 that,
when applied to applicant's identified goods, it is likely
to cause confusion or mistake or to deceive.
Applicant has appealed, and has filed an appeal brief,
a supplemental appeal brief and, in response to the
Examining Attorney's appeal brief, a reply brief.
Applicant also requested an oral hearing at which both its
attorney and the Examining Attorney appeared.
requirement that an application based on Section 44(e) must
include a declaration of a bona fide intention to use the mark in
commerce even if use in commerce is asserted in the application.
3 Registration No. 1538777, issued May 16, 1989; Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Serial No. 76069661
4
Before we turn to the substantive issue in this
appeal, there are some procedural points which we must
address. On April 20, 2004, eight days prior to the oral
hearing in this appeal, and a little more than two years
after filing its notice of appeal, applicant filed a
"motion for leave to offer new evidence and to offer a new
declaration in support of new evidence," which we deem to
be a request for remand. Applicant states that this new
evidence came to Applicant's attention "subsequent to the
final action." However, the final Office action issued on
October 14, 2001. Applicant does not state how long after
the final Office action this new evidence came to its
attention. The declaration submitted with the motion is by
Larry Batchelor, an employee of applicant who had
previously been employed by a company which owned the cited
registration.4 Mr. Batchelor worked at this company from
January 1997 until March of 2001; he has been associated
with applicant since October 2001. The exhibits Mr.
Batchelor seeks to introduce by his registration include
documents obtained by him during his employment with AM
4 Technically, Mr. Batchelor was employed by Pavion, Ltd., which
was purchased by AM Cosmetics, Inc., which had previously
purchased Arthur Matney Co., Inc., the owner of the cited
registration.
Serial No. 76069661
5
Cosmetics. Another exhibit was received by applicant on
November 17, 2003.
Obviously, information from Mr. Batchelor could have
been made of record any time after he became associated
with applicant in October 2001. Applicant has provided no
explanation as to why it waited until April 20, 2004 to do
so. Nor has applicant provided any explanation as to why
it waited until this date to submit an exhibit that came
into applicant's possession on November 17, 2003, one month
before the mailing of the Examining Attorney's appeal
brief.
A review of the file shows that applicant has
submitted or attempted to submit evidence several times
after the filing of its notice of appeal. On April 4,
2002, along with its notice of appeal, applicant submitted
a "response after final action." The Board remanded the
application to the Examining Attorney to consider these
remarks, and the request was denied on May 8, 2002. On
June 28, 2002, applicant filed a request for an extension
of time to file its brief because "applicant has found and
collected new evidence." Applicant submitted 16 exhibits,
along with a ten-page argument, on September 5, 2002. The
Board granted that request for remand on November 19, 2002.
The request for reconsideration was subsequently denied by
Serial No. 76069661
6
the Examining Attorney on January 29, 2003. On March 26,
2003, applicant again filed a request for remand in order
to submit sixteen additional exhibits, as well as seven
pages of argument. The Board granted that request for
remand as well, although the Examining Attorney was not
persuaded by the submission. Thus, this latest motion for
leave to offer new evidence is the fourth submission by
applicant after the filing of its notice of appeal.
Section 1207.02 of the TTAB Manual of Procedure
discusses requests for remand. Good cause for a remand
must be shown, and
the length of the delay in making the
request after the reason for the remand
becomes known, or the point in the
appeal process at which the request for
remand is made, will be considered in
the determination of whether good cause
exists. Generally, the later in the
appeal proceeding that the request for
remand is filed, the stronger the
reason that must be given for good
cause to be found.
TBMP §1207.02 (2d ed. rev. 2004). In view of the general
history of the prosecution of this application, the absence
of any explanation by applicant as to why the evidence
could not have been made of record earlier, and the
extremely advanced stage of the proceeding at which the
request was made (days before the oral hearing),
Serial No. 76069661
7
applicant's motion for leave to offer new evidence/request
for remand is denied.
We also point out that, even if applicant's request
for remand had been granted, the evidence applicant seeks
to make of record would have no effect on our decision
herein. Applicant is attempting to provide information
about the demographics of the consumers of the products
sold under the cited trademark, as well as documents
related to pricing, sales tactics and advertising.
However, it is well established that in determining the
issue of likelihood of confusion, we must consider the
goods as identified in the cited registration and the goods
as identified in the subject application, not what the
evidence shows them to be. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re William Hodges & Co., Inc. 190
USPQ 47 (TTAB 1976). Thus, we must deem the registrant's
goods to be sold through all appropriate channels of trade
and at all price points for the specific cosmetic items,
and we must consider the purchasers to be all customers for
goods of this type. See In re Davis-Cleaver Produce
Company, 197 USPQ 248 (TTAB 1977).5
5 It is also noted that the record does include website
materials and articles purporting to evidence the registrant's
Serial No. 76069661
8
As a final administrative point, we note that during
the examination of the application the Examining Attorney
stated that certain exhibits to which applicant had
referred were not in the record. The Examining Attorney
did not mention any missing exhibits in her brief, and we
therefore assume that all of them were associated with the
file by the time she wrote her brief. In any event, we
confirm that all 34 exhibits submitted by applicant are
with the file, and that we have considered them in writing
this opinion.
This brings us to the substantive issue in this
appeal. 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 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
target consumer market, such that the additional evidence
applicant seeks to submit would appear to be simply cumulative
and/or confirmatory. Again, because registrant's identification
of goods is not limited as to channels of trade or classes of
customers, evidence as to the registrant's actual trade channels
or classes of customers cannot aid applicant to show that
confusion is not likely.
Serial No. 76069661
9
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 the goods, they are not identical.
However, it is not necessary for goods to be identical in
order to find likelihood of confusion. It is necessary
only that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
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, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, the Examining Attorney has made of
record numerous third-party registrations which show that
companies have registered their marks for goods of the type
identified in applicant's application and the cited
registration. See, for example, Reg. No. 2480095 for,
inter alia, suntan lotion, sun screen, body lotion, blush
powder, bronzer; Reg. No. 2453604 for, inter alia,
eyeshadow, mascara, eye pencil, eyeliner, eyebrow pencil,
blush, lipstick; body lotion, facial moisturizer, lip
Serial No. 76069661
10
emollient with sun block, hand cream, sun tan lotions; Reg.
No. 2432958 for, inter alia, lipstick, lip pencil, eye
pencil, eye shadow, blush, mascara, eye liner, skin
moisturizer, body moisturizer, self tanner, tanning lotion,
tanning gel, tanning oil, and after-tanning moisturizer;
and Reg. No. 2437420 for, inter alia, eyeliner, eye
shadows, mascara, blush, lipstick, skin lotions, and face
and body creams.
Third-party registrations which individually cover a
number of different items and which are based on use in
commerce serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Further, these goods are of a type that might be used
by a consumer as part of a beauty regimen. Thus, for
example, one might apply the skin and body creams and
lotions identified in applicant's application prior to or
after applying the cosmetics identified in the cited
registration. Or the consumer might apply sun screening
preparations prior to applying cosmetics. Further, a
consumer might use sun tanning preparations or sun tan
accelerator products as well as cosmetics in order to
enhance their appearance.
Serial No. 76069661
11
Applicant has argued that the consumers for its
products and those of the registrant are different because
the registrant's goods are directed to the African-American
and other dark-skinned ethnic market, and such consumers
would not have a need for sun tanning or sun tan
accelerating products. There are two difficulties with
this argument. First, applicant's goods include skin and
body creams and skin and body lotions and such products
could be used by consumers of any skin coloring. More
importantly, the goods as identified in the cited
registration are not limited as to their customers. Thus,
as we have previously stated, we must assume that these
goods are sold to all customers who would use cosmetics,
i.e., we must deem the customers for the registrant's
products to include women of all ethnicities, including
women who would purchase applicant's sun tanning and
screening preparations, as well as its skin and body creams
and lotions.
As for the channels of trade, because there is no
limitation in the identification in either the cited
registration or applicant's application, we must deem the
goods to be sold in all appropriate channels for such
goods. They would include department stores, mass
merchandising outlets, spas, salons, discount stores and
Serial No. 76069661
12
drugstores. Even if applicant's goods are sold in "spas,
salons and high end specialty cosmetic shops," reply brief,
p. 4, the identification does not restrict the goods to
sales in such outlets.6 In short, we must assume
applicant's and the registrant's goods to be sold in the
same channels of trade, to the same groups of consumers.
Applicant asserts that presumptions that the goods
travel in the same channels of trade and are sold to the
same customers may be rebutted with evidence as to actual
channels of trade and classes of customers. Although we
have addressed this previously, because it is such a major
part of applicant's argument, we reiterate that the law is
well-settled that "the question of likelihood of confusion
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in applicant's
application vis-à-vis the goods and/or services recited in
an opposer's registration [or, in the case of an ex parte
6 We note that in its initial appeal brief applicant states that
its goods are sold in "major department store chains," p. 12, but
that in its reply brief applicant has said that its goods are
“sold at spas, salons and higher priced specialty stores.” p. 3.
This discrepancy in applicant's statements is of no moment,
however, since, as discussed above, we must determine the issue
of likelihood of confusion based on the goods as they are
identified in applicant's application and in the cited
registration, and must assume that they are sold in all channels
of trade appropriate for the identified goods.
Serial No. 76069661
13
appeal, the cited registration], rather than what the
evidence shows the goods and/or services to be." Canadian
Imperial Bank of Commerce v. Well Fargo Bank, N.A., supra
at 1 USPQ2d 1814. This is because "although a registrant's
current business practices [in connection with which the
mark is used] may be quite narrow, they may change at any
time." Canadian Imperial Bank of Commerce, quoting CBS,
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir.
1983).
We also note that cosmetics and sun tanning and sun
screening preparations, as well as skin and body lotions,
can be priced relatively inexpensively. Applicant asserts
that registrant's products retail at approximately $5.00
and less per unit. Supplemental brief filed October 7,
2003, p. 13. Although applicant may, in fact, sell its
goods at a somewhat higher price, goods of the type
identified in applicant's application may certainly be sold
in the same price range as the registrant's cosmetics
products. Thus, decisions to purchase, for example, a
container of mascara or of sun tan lotion may be made on a
casual or even impulse basis, without careful examination
of the trademark for the item.
This brings us to a consideration of the marks.
Applicant has argued that the only element common to both
Serial No. 76069661
14
marks—TROPEZ—is weak and suggestive, and therefore that it
is to the other elements in the marks that consumers will
look to distinguish the source of the goods. Thus,
applicant asserts that the stylizations of the two marks
distinguish them, as well as the design element in
applicant's mark and the additional word "ST."
We disagree. The typestyles of the two marks,
although somewhat different, are not so unusual that
consumers are likely to remember them. Applicant's mark is
depicted in plain block letters, while the cited mark is in
what would be considered a normal script form. As for the
design element, in general, if a mark comprises both a word
and a design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods
or services. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). We think that, given the abstract nature of
the design in applicant's mark, and the prominent position
of the words, that general principle applies to applicant's
mark, and it is the literal portion, ST. TROPEZ, that must
be considered the dominant element. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)
(although marks must be compared in their entireties, there
is nothing improper, for rational reasons, in according
certain portions of a mark greater weight).
Serial No. 76069661
15
The cited mark is TROPEZ, rather than ST. TROPEZ.
However, again we do not believe that this difference is
likely to be noted by consumers. ST. TROPEZ is a famous
French Riviera seaside resort town. Applicant has
acknowledged that "the word 'TROPEZ,' and all of its
derivations, suggests the rich, luxurious lifestyle that is
enjoyed by vacationers on the Riviera." Communication
filed September 5, 2002, p. 3. See also Brief filed March
26, 2003, p. 5. Not only do the two marks have the same
connotation, but consumers are likely to view TROPEZ as the
equivalent of ST. TROPEZ.
We recognize that there are distinct differences
between the marks which can be detected when they are
viewed side by side. However, under actual marketing
conditions consumers do not have the luxury to make such a
comparison, but must rely on hazy past recollections.
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980). In this case, because TROPEZ will be viewed
as the equivalent of ST. TROPEZ, the marks have the same
connotation as well as strong similarities in appearance
and pronunciation due to the identical term TROPEZ in each.
As a result, the overall commercial impression of the marks
is the same.
Serial No. 76069661
16
In its appeal brief filed March 26, 2003, applicant,
in addition to arguing that ST. TROPEZ has a geographic
meaning and a suggestive significance based on that
meaning, has asserted that ST. TROPEZ is the name of a
saint, while TROPEZ is a personal name, the modern spelling
of Torpes, "one of Nero's centurians [sic] who was beheaded
in Pisa for the sake of his religion." p. 9. Applicant has
further asserted that the Patent and Trademark Office has a
long history of finding no likelihood of confusion between
marks which consist, on the one hand, of a personal name,
and on the other, of that name preceded by the abbreviation
"ST." We are not persuaded by this argument. Applicant
has not submitted any evidence that the consumers for its
products and those of the registrant would regard TROPEZ as
a personal name or would know that ST. TROPEZ is/was a
saint. Although there may well have been a Christian
martyr named Torpes who was sainted, and although the
Riviera town may have been named after this person, there
is no indication that the general public will be aware of
these meanings, or that "Tropez" is a modern spelling of
"Torpes." On the contrary, the Examining Attorney
conducted an extensive search of the NEXIS database for the
term TROPEZ, and "a cursory review of the numerous articles
[16,680 were retrieved] failed to evidence use of the term
Serial No. 76069661
17
TROPEZ as a proper name." Office action mailed July 16,
2003. Accordingly, we do not consider the instant
situation to be analogous to the third-party "ST./personal
name" registrations.
Applicant has also argued that ST. TROPEZ is a weak
mark, relying on what it asserts to be various third-party
registrations for that term. In support of this position,
applicant has submitted a listing of applications and
registrations for ST. TROPEZ/SAINT TROPEZ marks. Such a
listing, which includes only the mark, serial number and/or
registration number, and indicator that the
application/registration is live, would normally be
insufficient to make such registrations of record. See In
re Duofold Inc., 184 USPQ 638 (TTAB 1974). However, the
Examining Attorney has not objected to the registrations,
and has, on the contrary, discussed them. Therefore, we
have considered the listing.
The probative value of this list is rather limited.
There are eighteen third-party registrations on the list.
(The applications are probative only of the fact that they
have been filed.) Third-party registrations can be used in
the manner of dictionary definitions, to show that a term
has a significance in a particular industry. While the
list submitted by applicant does not indicate the goods or
Serial No. 76069661
18
services for which the marks have been registered, the
Examining Attorney has reviewed them and reports that none
of the third-party registrations is for goods or services
that are related to the cited registration. Thus, contrary
to applicant's contention, TROPEZ is not a weak mark in
terms of co-existing on the register with other ST. TROPEZ
marks for similar goods.
As we have previously stated, we accept applicant's
assertion that ST. TROPEZ is suggestive of "the rich,
luxurious lifestyle that is enjoyed by vacationers on the
French Riviera, in the seaside resort town of Saint Tropez,
a sister city to Beverly Hills." Applicant's brief filed
March 26, 2003, p. 5. However, this connotation is the
same for applicant's mark and for the cited mark. Although
the scope of protection accorded to suggestive marks may be
less than that for arbitrary marks, that protection extends
in this case to prevent the registration of the similar
mark ST. TROPEZ and design for closely related goods.
Simply put, consumers who are familiar with the
registrant's TROPEZ mark for cosmetics are likely to assume
that sun tanning and sun screening preparations and skin
and body creams and lotion sold under the mark ST. TROPEZ
and design emanate from the same source.
Serial No. 76069661
19
Finally, applicant argues that its mark and the
registrant's have "peacefully" coexisted for ten years
without applicant's having received any communication or
objection from the registrant. Applicant has argued that
this should be viewed as an "implied consent" by the
registrant. We disagree. Although an actual consent by
the owner of a cited registration can be extremely
persuasive in the determination of likelihood of confusion,
see Bongrain International (American) Corp. v. Delice de
France Inc., 811 F2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987),
the lack of an objection cannot be viewed as the equivalent
of a consent. Further, the lack of evidence of actual
confusion may, in this case, be attributable to differences
in the actual customer bases of applicant and the
registrant. However, as we have previously discussed, our
determination of likelihood of confusion must be based on
the premise that applicant's and the registrant's goods may
be directed to the same class of consumers.
Decision: The refusal of registration is affirmed.