Target Brands, Inc.v.Alan Russ Gottlieb

Trademark Trial and Appeal Board

May 13, 2008

No. 91171714 (T.T.A.B. May. 13, 2008)

:

AZ Mailed: May 13, 2008

Opposition No. 91171714

Target Brands, Inc.

v.

Alan Russ Gottlieb

Before Drost, Zervas and Kuhlke, Administrative Trademark
Judges.

By the Board:

On February 11, 2005, Alan Russ Gottlieb (“applicant”)
filed an application (Serial No. 78566136) to register the
mark CLEARX (in standard character form) on the Principal
Register for goods and services including the following
International Class 35 services:
retail store services featuring optical products
in the nature of eyeglasses, sunglasses, contact
lenses, frames for eyeglasses, and parts and
accessories therefor, cosmetics in the nature of
skin and facial creams and lotions, skin
cleansers, nail and cuticle creams, non-medicated
lip balms and sunscreens, makeup in the nature of
lipstick, lip liners, lip gloss, foundation
makeup, pressed powder compacts, loose face
powder, eye shadow, eye liners, mascara,
concealers, blush and makeup remover,
pharmaceutical grade skin care preparations in
the nature of medicated skin creams and lotions
for use in conditions of acne, rosacea, scars,
United States Patent and Trademark
Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
Opp. No. 91171714
2
hyperpigmentation, photoaging and wrinkles,
medicated lip balms and medicated sunscreens, and
nutritional supplements and vitamins.

The application states a claim of a bona fide intention to
use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Target Brands, Inc. (“opposer”) has opposed
registration of applicant's mark for its International
Class 35 services only, asserting priority based on (i) use
of CLEARRX in connection with retail pharmacy services
before the filing date of applicant's application, and (ii)
opposer's application Serial No. 78555155, filed January
27, 2005, for the mark CLEARRX (in standard character form)
for “retail pharmacy services,” and a likelihood of
confusion.
Applicant, in its answer, has admitted that there is a
likelihood of confusion between applicant's and opposer's
marks, but has denied opposer’s allegation of priority.
Applicant also asserted a number of affirmative defenses,
including laches, estoppel and unclean hands.
This case now comes up on opposer's motion for summary
judgment (filed March 22, 2007) on its claims of priority
and likelihood of confusion, supported by the declaration
and exhibits of Timothy Cruz, opposer's attorney, and the
declarations of various employees of opposer and opposer's
Opp. No. 91171714
3
parent corporation, Target Corporation. Applicant has
responded to opposer's summary judgment motion; applicant's
response is supported by the declaration and exhibits of
Seth Appel, applicant's attorney.
The burden is on the party moving for summary judgment
to demonstrate the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Federal Rule of Civil Procedure 56(c). The
evidence of record and any reasonable inferences that may
be drawn from the underlying undisputed facts must be
viewed in the light most favorable to the non-moving party.
See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992). In considering the propriety
of summary judgment, the board may not resolve issues of
material fact; it may only ascertain whether such issues
are present. See Lloyd’s Food Products Inc. v. Eli’s Inc.,
987 F.2d 766, 235 USPQ2d 2027 (Fed. Cir. 1993).
Standing
We note that applicant has not challenged opposer's
standing to oppose applicant's application. However, here,
three of applicant's applications for marks containing
CLEAR, discussed at greater length infra, have been cited
as potential bars to registration of opposer's CLEARRX
mark. See Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB
Opp. No. 91171714
4
1990); Cruz’s dec. ex. A; Appel dec. ex. C. This is
sufficient to confer standing on opposer to oppose
applicant’s mark.
Because opposer’s standing is established and
applicant has conceded opposer's likelihood of confusion
claim, see brief at p. 7, we find there are no genuine
issues of material fact relating to opposer's standing and
opposer's claim of likelihood of confusion. We therefore
proceed to the central question in this case, which is the
question of priority.
Priority
We consider first opposer's claim based on the filing
of its intent-to-use application for the mark CLEARRX for
“retail pharmacy services” on January 27, 2005,
approximately two weeks prior to the date applicant filed
its application. On February 23, 2006, the Office
suspended examination of opposer's application in view of
three applications owned by applicant. Cruz dec. ex A;
Appel dec. ex. D.
An opposer with an intent-to-use application may rely
on the filing date of its application to establish
Opp. No. 91171714
5
priority.1 See Larami Corp. v. Talk To Me Programs Inc., 36
USPQ2d 1840 at n. 7 (TTAB 1995) (“An opposer may rely on
Section 7(c) to establish priority if it owns a
registration for the mark it is asserting under Section
2(d) or if it has filed an application for registration of
that mark. We might put the matter more simply by saying
that in proceedings before the Board the constructive use
provisions of Section 7(c) may be used both defensively and
offensively.”) See also Zirco Corp. v. American Telephone
& Telegraph Co., 21 USPQ2d 1542 (TTAB 1991). In this case,
opposer may rely on the filing date of its intent-to-use
application to establish priority.
In response to opposer's claim of priority, applicant
has pleaded as an affirmative defense “superior legal
rights arising from” application Serial No. 76629648 for
the mark CLEARX (filed January 27, 2005) for “nutritional
supplements and vitamins” in International Class 5; and
application Serial Nos. 76620689 (filed November 15, 2004)
and 76625903 (filed December 29, 2004) for the marks CLEARX
and THE CLEAR PRESCRIPTION, respectively, both for
“cosmetics, namely, skin and facial creams and lotions,
skin cleansers, nail and cuticle creams, non-medicated lip

1 This is true whether or not the application is in suspended
status. Applicant's argument that opposer may not rely on its
application because it is in suspended status is without merit.
Opp. No. 91171714
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balms, sunscreens” in International Class 3, and
“pharmaceutical grade skin care preparations, namely,
medicated skin creams and lotions for use in conditions of
rosacea, scars, hyperpigmentation, photoaging and wrinkles,
medicated lip balms, and medicated sunscreens” in
International Class 5. Appel dec. exhibits A – C.
According to applicant, when its first filed application
(Serial No. 76620689) matures into a registration,
applicant will have priority dating back to November 15,
2004.
Applicant's affirmative defense is essentially that it
may tack constructive use of the marks which are the
subject of these applications back to the filing dates of
these applications, which precede the filing date of
opposer's application. Applicant has not cited to any
authority for the proposition that an applicant may tack
the constructive use of a mark to establish priority, and
we are not aware of any such authority. Without deciding
whether it is possible for an applicant to tack on any
priority rights from an earlier filed intent-to-use
application, we find that even if it were possible to do
so, applicant may not tack back to the filing date of any
of its pleaded applications in seeking to establish its
priority. In order to tack, the goods or services of the
Opp. No. 91171714
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prior mark must be “substantially identical” to the goods
or services of the application. See, e.g., Big Blue
Products Inc. v. International Business Machines Corp., 19
USPQ2d 1072 (TTAB 1991) (“In other words, if the tacking of
the use of one mark onto the use of a second mark - for the
purposes of obtaining or maintaining a registration - is
permitted only when the marks are ‘legal equivalents’ or
‘indistinguishable,’ the tacking of the use of a mark for
certain goods or services onto the use of the same mark for
other goods or services - for the purposes of obtaining or
maintaining a registration - should be permitted only when
the two sets of goods or services are “substantially
identical.”). Applicant's retail store services featuring
particular goods are not substantially identical to those
goods.
In view of the foregoing, opposer has established that
there is no genuine issue of material fact that it has
priority. Because we have awarded priority to opposer in
view of its earlier filed application, we need not reach
opposer's allegations regarding actual use of its mark.
Affirmative Defenses
Applicant has only raised three of its affirmative
defenses in its brief. We therefore consider applicant to
have waived those defenses it alleged but did not discuss
Opp. No. 91171714
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in its brief, and only consider the affirmative defenses of
laches, estoppel and unclean hands.
“The elements of laches are (1) unreasonable delay in
assertion of one's rights against another; and (2) material
prejudice to the latter attributable to the delay. The
elements of equitable estoppel are (1) misleading conduct,
which may include not only statements and action but
silence and inaction, leading another to reasonably infer
that rights will not be asserted against it; (2) reliance
upon this conduct; and (3) due to this reliance, material
prejudice if the delayed assertion of such rights is
permitted. As applied in trademark opposition or
cancellation proceedings, these defenses must be tied to a
party's registration of a mark ….” Lincoln Logs Ltd. v.
Lincoln Pre-Cut Log Homes Inc., 23 USPQ2d 1701, 1703 (Fed.
Cir. 1992)(citations omitted).
Applicant argues that laches and estoppel apply to
opposer's claim because opposer learned of applicant’s
application and domain name years ago on December 13, 2004;
and that applicant “has spent the past two-and-a-half years
creating a business plan and developing his products. His
business plan, not surprisingly, includes selling these
products, and for that reason he filed App. No. 78566136.”
Brief at p. 15.
Opp. No. 91171714
9
Laches and estoppel in the context of an opposition
generally run from the time when the application is
published for opposition, which in this case was on
March 7, 2006. Inasmuch as opposer filed its opposition
shortly after the mark was published for opposition and
opposer did not indicate that it would not oppose
applicant's application, we find no basis for applicant’s
laches and estoppel defenses. See National Cable
Television Ass'n v. American Cinema Editors, Inc., 937 F.2d
1572, 19 USPQ2d 1424 (Fed. Cir. 1991). Also, applicant has
not established that he has suffered any prejudice;
applicant has not introduced his business plan and has not
specified those activities he has engaged in, in
“developing his products.” Further, with respect to
applicant's unclean hands affirmative defense based on an
allegation of bad faith “by invading Dr. Gottlieb’[s]
rights and trying to steal his trademark,” we find this,
without more, is insufficient to establish an unclean hands
defense.
In conclusion, opposer has established its standing
and its priority, and applicant has conceded likelihood of
confusion and cannot maintain its affirmative defenses.
Opposer's summary judgment motion therefore is granted, the
opposition is sustained with respect to applicant's
Opp. No. 91171714
10
International Class 35 services, and judgment is entered in
favor of opposer contingent upon the issuance of a
registration to opposer in application Serial No. 78555115.2
The parties are ordered to inform the Board within
thirty days of the registration or abandonment of opposer's
pending application (Serial No. 78555115).

2 See Section 7(c) of the Trademark Act, 15 U.S.C. 1057(c);
Trademark Rule 2.129(d), 35 C.F.R. § 2.129(d); Larami, 36 USPQ2d
at n. 7 (“Of course, as we have noted, Section 7(c) provides that
any judgment entered in favor of a party relying on constructive
use -- whether that party is in the position of plaintiff or
defendant in a Board proceeding -- is contingent upon the
ultimate issuance of a registration to that party.”).