The Wet Seal, Inc.v.FD Manage-ment, Inc.

Trademark Trial and Appeal Board

Feb 9, 2007

No. 91157022 (T.T.A.B. Feb. 9, 2007)

Oral Hearing: Mailed:
April 12, 2006 February 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

The Wet Seal, Inc.
v.
FD Management, Inc.
_____

Opposition No. 91157022

_____

John M. Cone of Hitchcock Evert LLP for The Wet Seal, Inc.

Joseph R. Dreitler of Frost Brown Todd LLC for FD Management,
Inc.
______

Before Holtzman, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

On February 5, 2002, applicant, FD Management, Inc., filed
an application to register the mark ARDENBEAUTY (in typed or
standard character form) based upon an allegation of a bona
fide intention to use the mark in commerce for the following
goods, as amended:
Fragrance products for personal use, namely,
perfume, cologne, toilet water, scented body lotion
and moisturizing cream, body oil, body powder,
THIS OPINION IS A
PRECEDENT OF THE
THE TTAB
Opp. No. 91157022
2
scented skin soap; cosmetics and skin care
preparations, namely, foundation make-up, face
powder, blusher, compacts, eye pencils, lip pencils,
lipstick, lip gloss, non-medicated lip balm,
mascara, eye make-up, eyeliners, skin moisturizer
and skin toner; hair care products, namely, shampoo,
hair conditioners, hair gel and hair spray; nail
care preparations, namely, nail polish, nail
strengtheners, and nail polish remover; shaving
cream, shaving gel, after-shave lotion; skin soap;
shower gel; deodorant; antiperspirant; potpourri;
sachets; suntanning preparations; sun screen and sun
block preparations, in Class 3.1

On June 30, 2003, The Wet Seal, Inc. (opposer or Wet Seal)
filed an opposition to registration of the mark in the
application. As grounds for opposition, opposer asserts that
since a date prior to the filing date of applicant's intent-
to-use application, opposer has used the mark ARDEN B for
women's clothing, footwear, purses and bags, hair ornaments and
jewelry; and in connection with retail apparel stores featuring
women's clothing, footwear, hats and clothing accessories; and
that applicant's mark ARDENBEAUTY when used on applicant's
goods so resembles opposer's mark ARDEN B for its goods and
services as to be likely to cause confusion.
Applicant, in its answer, has denied the salient
allegations in the notice of opposition.

1 Application Serial No. 76372550. The application includes a claim
of ownership of Registration Nos. 2453605; 2278502; 1914462; 1813342;
1649230; 1579710; 1073947; 0545890; and 0545592, for marks
consisting of or comprising ELIZABETH ARDEN for a variety of personal
and beauty care products and services.
Opp. No. 91157022
3
The record includes the pleadings and the file of the
involved application; opposer's testimony (with exhibits) of
Laura Nicholas, opposer's vice president of store operations;
and applicant's testimony (with exhibits) of Ronald Rolleston,
applicant's executive vice president and chief marketing
officer; and James Thomas Perry, vice president and associate
general counsel of applicant's parent company, Elizabeth Arden,
Inc. In addition, opposer filed notices of reliance on
February 24, 2005 and June 10, 2005; and applicant filed
notices of reliance on March 31, 2005 and April 13, 2005.
Both opposer and applicant filed briefs. An oral hearing
was held.
Before addressing the merits of the case, some evidentiary
matters require our attention. Applicant has filed a motion to
strike opposer's June 10, 2005 notice of reliance consisting of
printouts of third-party registrations on the ground that the
evidence constitutes improper rebuttal.2 Opposer states in the
notice of reliance that it is relying on this evidence to show
a relationship between clothing and cosmetic products. Opposer
argues that the evidence constitutes proper rebuttal "as it
answers Mr. Rolleston's attempts to deny agreeing to this

2 The Board, on July 18, 2005, issued an order deferring consideration
of the motion to strike until final decision.
Opp. No. 91157022
4
point" (Reply Brief, p. 8), meaning that Mr. Rolleston would
not concede, on cross-examination, that the goods are related.
The motion to strike is well taken. This rebuttal
evidence was not submitted for the proper purpose of denying,
explaining or discrediting applicant's case but instead was
clearly an attempt by opposer to strengthen its case-in-chief.
See The Ritz Hotel Limited v. Ritz Closet Seat Corp., 17 USPQ2d
1466 (TTAB 1990). The burden is on opposer, in the first
instance, to come forward during its own testimony period with
proof of the essential elements of its claim, one element of
which is the relatedness of the parties' goods. Opposer should
not have even assumed that applicant would call its own
witness, let alone that the witness, if called, would make an
admission favorable to opposer's case.
The motion to strike the notice of reliance filed June 10,
2005 is accordingly granted, and the materials submitted
thereunder have not been considered.
Further, we note that opposer has introduced, by its
notice of reliance dated February 24, 2005, certain documents
which are not appropriate for introduction in that manner as
they do not qualify as either printed publications, such as
books and periodicals available to the public, or as official
records as contemplated by Trademark Rule 2.122(e). These
documents are identified in the notice of reliance as exhibits
Opp. No. 91157022
5
24-29 and 31-35 and they include annual reports, financial
statements, advertising invoices and other advertising
documents.3 Consequently, these exhibits have not been
considered. Other documents, which are identified in the
notice of reliance as exhibits 2 through 23, and exhibit 30,
although not otherwise admissible by notice of reliance, are
considered of record as they are duplicates of exhibits which
were properly introduced during the testimony of Ms. Nicholas.
In addition, we note that applicant raised a number of
objections during the deposition of Ms. Nicholas, to her
testimony regarding matters which occurred prior to her
employment with opposer in 2001, including her testimony
regarding opposer's use of the mark prior to that date.
However, by failing to preserve the objections by renewing them
in its brief, applicant has waived its objections to this
evidence. See TBMP §§707.03(c) and 707.04 (2d ed. rev. 2004),
and cases cited therein, including Hard Rock Café International
(USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000)
(objection to exhibit raised during deposition but not
maintained in brief deemed waived); and Reflange Inc. v. R-Con
International, 17 USPQ2d 1125, 1126 n.4 (TTAB 1990) (objections

3 Opposer has attempted to introduce the exhibits in the notice of
reliance by the declaration of an officer of opposer who identifies
and attests to the authenticity of the attached documents. However,
absent a stipulation by the parties to introduce evidence in this
manner, the declaration is not properly of record. See Trademark
Rule 2.123(2)(b).
Opp. No. 91157022
6
to testimony and exhibits made during depositions deemed waived
where neither party raised any objection to specific evidence
in its brief).
Finally, we note that in addition to its pleaded ground of
likelihood of confusion, opposer in its brief, pointing to
statements made during opposer's cross-examination of Mr.
Rolleston, argues the unpleaded claim that the involved
application is void ab initio on the ground that applicant did
not have a bona fide intention to use the mark in commerce on
at least some of the identified goods as of the filing of the
application. Applicant did not object to opposer's cross-
examination on this subject during the deposition and raised no
objection in its brief to opposer's introduction of this
evidence on the ground that opposer failed to either originally
plead or amend the pleading to assert the new issue. Moreover,
applicant has addressed the issue on the merits in its brief.
Thus, we find that the issue of applicant's bona fide intent to
use the mark was tried by the parties with applicant's implied
consent. The pleading is accordingly deemed amended under Fed.
R. Civ. P. 15(b) to conform to the evidence and to assert the
claim. However, contrary to opposer's contention, an
application will not be deemed void for lack of a bona fide
Opp. No. 91157022
7
intention to use absent proof of fraud,4 or proof of a lack of
bona fide intention to use the mark on all of the goods
identified in the application, not just some of them.5 See,
with regard to use-based applications, Grand Canyon West Ranch
LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006). Thus, we
will decide this issue in terms of whether the items, if any,
for which opposer has shown applicant's lack of bona fide
intention to use the mark should be deleted from the
application.
We turn then to the merits of the case and first, the
issue of likelihood of confusion. Briefly, opposer, The Wet
Seal, Inc., is a young women's or girls' junior contemporary
apparel and accessories company operating a chain of stores
under the name WET SEAL. ARDEN B is a division of opposer, and
it was developed as an extension of opposer's junior business.
Opposer claims that it has been selling clothing and
accessories under the ARDEN B mark since 1997 and that it has

4 Fraud occurs when an applicant makes a false, material
representation that the applicant knew or should have known was
false. See General Car and Truck Leasing Systems, Inc. v. General
Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990). Opposer's counsel
stated at the oral hearing that a claim of fraud has been asserted,
but we find no such claim in the pleading or in the trial record.

5 Opposer has cited Caesars World, Inc. v. Milanian, 126 Fed.Appx. 775
C.A.9 (Nev.) (February 01, 2005) in support of its position that the
application should be held void. This case was not published in the
Federal Reporter and moreover there is nothing in the decision to
indicate that the application was held void based on the lack of bona
fide intent to use the mark on fewer than all the goods.

Opp. No. 91157022
8
operated retail clothing and accessories stores under the ARDEN
B mark since 1998.
Applicant, FD Management, Inc., is a wholly-owned
subsidiary of Elizabeth Arden, Inc. Although applicant filed
the involved application on an intent-to-use basis, the record
shows that applicant actually began using the ARDENBEAUTY mark
on or about August 2002 on at least some of the products
identified in the application, including perfume, body lotion
and body wash.
Applicant contends that it has used the ARDENBEAUTY mark
prior to any date on which opposer can rely. In particular,
applicant is claiming priority based on its predecessors'
earlier use and ownership of registrations for ELIZABETH ARDEN
and/or their asserted earlier use of ARDEN alone in connection
with a variety of beauty care products and services.
Applicant also argues that the existence of a prior settlement
agreement between the parties "negates any potential likelihood
of confusion" between the two marks.6 Brief, p. 3.

6 The agreement itself was introduced, pursuant to the parties'
protective order, as a confidential exhibit to the testimony of Mr.
Rolleston. However, the testimony regarding the agreement has not
been redacted or made confidential. Further, the agreement was again
introduced during the deposition of Mr. Perry with no mention of its
confidential nature, and the parties have openly discussed certain
provisions of the agreement in their briefs. Thus, the
confidentiality of the agreement is waived. The Board will
nonetheless exercise discretion in discussing the agreement.

Opp. No. 91157022
9
As background for the settlement agreement, prior to this
opposition, opposer had filed two applications for ARDEN B. in
the stylized form shown below.

One application was for women's clothing and accessories and
for retail clothing and accessory store services (Serial No.
75365543, filed September 30, 1997); and the other was for
sunglasses, jewelry, handbags, and hair ornaments (Serial No.
75394241, filed November 21, 1997).
Applicant's predecessors, Unopco Sub, Inc. and Conopco,
Inc., dba Elizabeth Arden Co., opposed each application
(Opposition Nos. 91112906 and 91112592, respectively) on the
ground of likelihood of confusion based on their ownership of
the mark ELIZABETH ARDEN in connection with a variety of beauty
care products and services.
The parties on January 9, 2001 entered into a settlement
agreement whereby the opposers in that case consented to Wet
Seal's use and registration of ARDEN B,7 and Wet Seal agreed, in

7 The agreement provides that Wet Seal is entitled to use and register
the ARDEN B mark in the script format shown above or, if different
than that format, "in a distinctively stylized form which is not the
same as, nor likely to cause consumer confusion with, any of the
stylized forms by which the Elizabeth Arden Mark is commercially
portrayed..."
Opp. No. 91157022
10
relevant part, never to use the mark ARDEN B on or in
connection with "cosmetics, skin care, hair care or fragrance
products...or as the name of spas, salons or stores
specializing in the sale of cosmetics, skin care, hair care or
body products or services... ."8 The oppositions were then
dismissed.
Wet Seal subsequently abandoned those two applications in
settlement of an opposition by a different party and on March
6, 2002 refiled applications for ARDEN B in the stylized form
below.9

From those applications, Registration No. 2795689 for retail
clothing stores issued on December 16, 2003; and Registration

8 We note that there are no provisions in the agreement regarding any
rights of applicant in the term ARDEN alone or otherwise apart from
ELIZABETH ARDEN.

9 The agreement contains no provisions which would preclude Wet Seal
from asserting its claimed rights in the term ARDEN B for the
identified goods and services against applicant. The agreement does
require Wet Seal to "avoid the use of the distinctive trade dress
features of the Elizabeth Arden 'red door' spas" including the color
red to a certain extent on materials such as clothing labels or store
signage, and Wet Seal agreed to discontinue use of the labels
displayed on "Exhibit B" attached to the agreement. The record copy
of this exhibit is illegible, but in any event, any question of
whether Wet Seal is entitled to use the ARDEN B mark in the form
shown above is not an issue in this case.

Opp. No. 91157022
11
No. 2879970 for women's clothing, jewelry and handbags issued
on August 31, 2004.
Opposer's standing and claim of priority
To begin with, we note that opposer filed a notice of
reliance on TARR and TESS copies of one of the registrations
noted above, Registration No. 2795689, for clothing stores.
Apart from any issue as to whether these records are sufficient
to show that the registration is subsisting and owned by
opposer as required by Trademark Rule 2.122(d), opposer did not
move to amend the pleading to add an allegation of ownership of
such registration.10 Because applicant was not otherwise given
fair notice of opposer's reliance on this registration, and
moreover applicant has objected to this evidence in its brief,
we have given no consideration to this unpleaded registration.11
We turn then to opposer's assertion of common law rights
in the ARDEN B mark. In order for a plaintiff to prevail on a
claim of likelihood of confusion based on its ownership of

10 The registration issued three months after the filing of the
opposition.

11 It is not, in any event, at all clear from the record that opposer
is relying on the registration to establish priority. Opposer does
not explain the relevance of the registration in its notice of
reliance, and only mentions the registration in passing in its brief,
and even then not in the context of a claim of priority.
Opposer has also submitted by this notice of reliance a copy of a
pending application for ARDEN B. SPORT. An application is not
evidence of anything except that the application was filed on a
certain date, and this application was filed on December 3, 2003,
subsequent to the filing date of the opposed application.
Opp. No. 91157022
12
common law rights in a mark, the mark must be distinctive,
inherently or otherwise, and plaintiff must show priority of
use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40 (CCPA 1981). Applicant has not questioned
the distinctiveness of ARDEN B; nor are there any other
circumstances in the case which would have put opposer on
notice of this defense, and we therefore find that the mark is
distinctive.12 See The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). See also Shalom Children's
Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993).
As to priority, the testimony of Ms. Nicholas and the
supporting documentation, including labels affixed to the
clothing, wrapping for accessories, product catalogues showing
ARDEN B items of clothing, sales figures, and other records of
use, are sufficient to demonstrate opposer's prior and
continuing use of the mark on women's clothing such as tops,
bottoms, suits and dresses, as well as accessories such as
handbags, belts and hats since 1997, and as a mark for
opposer's retail clothing stores featuring women's clothing and
accessories since 1999.

12 As discussed later in this decision, the record shows that the term
ARDEN is a surname. However, there is no evidence or argument that
opposer's mark ARDEN B, as a whole, is, or would be perceived as,
primarily merely a surname.
Opp. No. 91157022
13
The record shows that opposer changed the font of the
ARDEN B mark in mid-2001 from its original script style to the
block letter form shown above and without the dot or period
after the letter "B." However, we find that these are
inconsequential changes in terms of opposer's continuing
priority rights in the mark. See Ilco Corp. v. Ideal Security
Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976)
("The law permits a user who changes the form of its mark to
retain the benefit of its use of the earlier form, without
abandonment, if the new and old forms create the same,
continuing commercial impression" Italics in original.) There
is no change in significance from one form to the other and the
difference in appearance is negligible. The two marks are
substantially identical. In any event, opposer has
demonstrated use of the mark in its modified form since prior
to the filing date of the application.
We also find that opposer, by virtue of its common law
rights arising from use of the mark ARDEN B on clothing and in
connection with retail clothing stores, has established a real
interest or standing to challenge the involved application.
Contrary to applicant's contention, no more is necessary for
standing. See Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 1028, 213 USPQ 185 (CCPA 1982).
Opp. No. 91157022
14
Applicant's claim of priority

An intent-to-use applicant is entitled to rely upon actual
use, or use analogous to trademark use, prior to the
constructive use date of the intent-to-use application. See
Corporate Document Services Inc. v. I.C.E.D. Management
Inc., 48 USPQ2d 1477 (TTAB 1998); and Dyneer Corp. v.
Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995).
Applicant contends that consumers will associate its
ARDENBEAUTY fragrance with "the famous 'Elizabeth Arden' and
'Arden' trademarks." Brief, p. 7. Applicant claims, based on
its assertion of 80 years of use and registration, extensive
advertising and significant sales, that its ELIZABETH ARDEN and
ARDEN marks "[are] famous and entitled to a wide scope of
protection." Id. Applicant has introduced status and title
copies of eight registrations for ELIZABETH ARDEN, and two
advertisements for ELIZABETH ARDEN cosmetics emphasizing the
ARDEN portion of the mark. Applicant has also introduced
nearly 200 third-party registrations containing the word BEAUTY
for personal care products. Based on this evidence applicant
argues that the word "beauty" is descriptive of such products
and contributes little to the overall commercial impression
created by ARDENBEAUTY and that ARDEN is the dominant portion
of its ARDENBEAUTY mark.
Opp. No. 91157022
15
Applicant appears to be making two separate "tacking"
arguments. One, that applicant is entitled to tack on the use
of ELIZABETH ARDEN to its present mark ARDENBEAUTY. The second
argument relates to applicant's claimed use of ARDEN alone and
its attempt to tack use of that mark on to ARDENBEAUTY.
The standard for tacking is very strict and tacking in
general is permitted only in "rare instances." See Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866, 1869 (Fed. Cir. 1991). In order to tack on prior use of
one mark on to another, the marks must be legal equivalents.
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same,
continuing commercial impression such that the consumer would
consider both as the same mark. Van Dyne-Crotty, supra. Thus,
a minor difference in the marks, such as an inconsequential
modification or modernization of the later mark (in the nature
of opposer's modification, for example), would not be a basis
for rejecting a tacking claim. See In re Flex-O-Glass, Inc.,
194 USPQ 203 (TTAB 1977). That is not what we have here.
As to applicant's first argument, applicant has demonstrated
use of the mark ELIZABETH ARDEN in connection with cosmetic and
fragrance products by virtue of the status and title copies of
its registrations for ELIZABETH ARDEN, the earliest of which
issued from an application filed on May 6, 1921. See Trademark
Opp. No. 91157022
16
Rule 2.122(d). However, the evidence that applicant has
presented does not establish that ELIZABETH ARDEN is a famous
mark. Long use and/or registration of a mark, without evidence
of the extent of consumer exposure to or recognition of the
mark over the years,13 is not sufficient to prove fame.14 More
important, the fame of ELIZABETH ARDEN, even if proven, would
not be a factor in our determination. Tacking is a question of
law. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001). As the Court stated

13 The evidence falls far short in this regard. Mr. Rolleston's
testimony on this subject, including his statement that ELIZABETH
ARDEN "is one of the more established names in our industry" (Dep.,
p. 10) is conclusory and unsupported by the record. To the extent
that applicant is attempting to rely on evidence of the asserted
recognition of ARDENBEAUTY to support its contention that ELIZABETH
ARDEN is famous, that argument and evidence fails. First, it is not
clear from the record whether the evidence of use and promotion of
ARDENBEAUTY also pertains to the mark ELIZABETH ARDEN. Even if it
did, however, the evidence is insufficient to establish fame of
ARDENBEAUTY, and therefore, by extension, ELIZABETH ARDEN. Among
other shortcomings of the evidence, the ARDENBEAUTY mark has only
been in use for three years; there is no evidence of any media
recognition during that time; no evidence of actual sales of
ARDENBEAUTY products, as opposed to gross shipments of those products
in units and value; and despite applicant's statement in its brief
that the products have been sold in 8500 stores since the
introduction of ARDENBEAUTY in 2002, there is no evidence to support
that claim. In fact, while ARDEMBEAUTY products at some point
apparently had been sold in department stores, Mr. Rolleston was
unable to identify any department store where the products were
currently being sold and he finally admitted that the ARDENBEAUTY
brand "wasn't remarkably successful in department stores." Dep., p.
91.

14 Applicant also contends that Grupo Gigante SA De CV v. Dallo & Co.,
391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004) supports its claim that
ELIZABETH ARDEN is famous. However, applicant cannot rely on facts
found in other cases to establish fame in this case. Furthermore,
the Court's statement alluding to the fame of ELIZABETH ARDEN was
dicta, made for the purpose of illustrating a hypothetical. It was
not based on a finding of fame.
Opp. No. 91157022
17
(citing Van Dyne-Crotty, supra at 1868), "No evidence need be
entertained other than the visual or aural appearance of the
marks themselves."
Applicant is clearly relying on a likelihood of confusion
analysis in support of its tacking claim, essentially arguing
that because of the fame of ELIZABETH ARDEN, consumers would
associate ARDENBEAUTY with ELIZABETH ARDEN and they would
believe the products sold under either mark come from the same
company. However, the law is clear that two marks are not
necessarily legal equivalents merely because they would be
deemed confusingly similar. Van Dyne-Crotty, Inc., supra.
ELIZABETH ARDEN and ARDENBEAUTY are not legally equivalent
marks. The two marks, while perhaps confusingly similar, are
certainly not indistinguishable. Most significantly,
ARDENBEAUTY does not include ELIZABETH and it adds the word
BEAUTY. Moreover, the two marks on their face impart different
information and create different commercial impressions.
ELIZABETH ARDEN identifies a particular individual.
ARDENBEAUTY, on the other hand, refers broadly to a type of
individual, i.e., an individual possessing a certain quality.
Although the word BEAUTY, as applicant has shown, has
frequently been adopted as part of registered marks in the
field of beauty care products and has little trademark
significance on its own, the term nonetheless contributes to
Opp. No. 91157022
18
the overall commercial impression of the mark. See, e.g.,
American Paging, Inc. v. American Mobilphone, Inc., 13 USPQ2d
2036 (TTAB 1989) (finding AMERICAN MOBILPHONE PAGING more
informative than and hence legally different from AMERICAN
MOBILPHONE notwithstanding that "PAGING" was merely descriptive
of the services), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726
(Fed. Cir. 1990). See also O-M Bread Inc. v. United States
Olympic Committee, 65 F.2d 933, 36 USPQ2d 1041 (Fed. Cir. 1995)
(OLYMPIC KIDS creates a different commercial impression than
OLYMPIC, notwithstanding the disclaimer of KIDS and its lack of
strong trademark significance).
Applicant's claimed use of ARDEN
Putting aside for the moment the question of whether
ELIZABETH ARDEN and ARDEN are legally equivalent marks, we note
at the outset that there is no evidence of actual trademark use
of ARDEN alone and insufficient evidence of promotion of ARDEN
alone to show analogous use.15 Applicant introduced, during the
testimony of Mr. Rolleston, two archival copies of
advertisements for ELIZABETH ARDEN products, one for soap, and
the other for skin cream and lotion. In both advertisements,

15 To the extent that applicant is arguing that it is entitled to
somehow tack on its use of ELIZABETH ARDEN to ARDEN and therefore its
present mark ARDENBEAUTY, without evidence of any use or promotion or
other evidence of consumer perception of ARDEN alone, but merely on
the basis that it is a shortened version of ELIZABETH ARDEN,
applicant's argument is rejected.

Opp. No. 91157022
19
the word ARDEN is displayed in large letters across the top of
the advertisement and ELIZABETH appears in small print within
the letter "D" in ARDEN. The advertisement for skin cream and
lotion contains a copyright notice of 1990; and a typed listing
of magazines, Town & Country, Vanity Fair, Confetti and
American Way, appears below the advertisement. Mr. Rolleston
read the names of the magazines into the record and stated that
the advertisement "features Vendella who was the spokesmodel at
the time [and] was featured" in those magazines. Dep., p. 75.
The advertisement for soap bears a copyright notice of 1992.
There is no similar listing of magazines on the 1992
advertisement, nor any testimony or other evidence indicating
when or where the 1992 ad was published.
To begin with, we note that although opposer argues in its
brief that Mr. Rolleston lacked personal knowledge of the
advertisements and cross-examined him on that subject during
the deposition, opposer never objected to Mr. Rolleston's
testimony or the introduction of the advertisements during the
deposition. Thus, any objection to this evidence is waived,16

16 The basis for opposer's objection is not entirely clear and we
construe it as an objection to the sufficiency of the foundation for
the advertisements, a defect that may have been curable if timely
raised. In any event, notwithstanding that Mr. Rolleston was
testifying as to matters which occurred prior to his employment with
applicant, we find that Mr. Rolleston adequately established the
authenticity of the advertisements as archival records. It is not
clear that the typed list of magazines appearing at the bottom of the
1990 advertisement was prepared as part of that original record.
Opp. No. 91157022
20
and the testimony and advertisements will be considered for
whatever probative value they may have. That said, however,
the probative value of this evidence is very limited. While we
accept that the 1990 advertisement contains a list of
magazines, there is nothing on the face of the document to
indicate when or even whether the advertisement ever actually
appeared in those magazines, and Mr. Rolleston's testimony on
this point is vague and unconvincing. Furthermore, the
copyright notices on the advertisements, while perhaps evidence
of when the ads were created, are not evidence that the ads
were ever actually run. Moreover, even if we assume that both
advertisements appeared in the listed magazines in 1990 and
1992, we have no evidence as to the extent or frequency of
publication and exposure during those years but more important,
those ads would have appeared over ten years ago. There is no
evidence of any continuing effort to separately promote ARDEN
at all since that time. Therefore, even if rights in ARDEN had
at one point in time been established, which is hardly clear in
this case given the presence of ELIZABETH in the letter D,
applicant has not shown that it has maintained or continued to
develop rights in the term.

Nevertheless, as opposer did not object to the evidence on this
basis, we consider the entire document as properly of record.
Opp. No. 91157022
21
In any event, ARDENBEAUTY is not the legal equivalent of
ARDEN. "Simply because a mark is a portion of an earlier mark,
our analysis should not stop there. Instead, our inquiry must
focus on both marks in their entirety to determine whether each
conveys the same commercial impression." Van Dyne-Crotty,
supra at 1869, emphasis in original (rejecting the argument
that the Board should have considered CLOTHES THAT WORK as
simply the abbreviated version of CLOTHES THAT WORK. FOR THE
WORK YOU DO). These marks are not indistinguishable and do not
create the same commercial impression. Where ARDEN refers
generally to any person with that surname, ARDENBEAUTY imparts
additional information about that person, one possessing
certain qualities or characteristics.
Thus, we find that applicant has failed to establish use
of ARDENBEAUTY on cosmetic products prior to the February 5,
2002 filing date of its application and that opposer has
established use of its mark on clothing prior to that date.17
We turn then to the issue of likelihood of confusion. In
making this determination we point out that the fact that
opposer does not have priority of use of its mark on cosmetics,
and may be contractually barred from using the mark on

17 We also note, in this regard, that there is no issue of fundamental
unfairness to applicant in finding in favor of opposer as to
priority. Opposer has used and registered the mark ARDEN B on
clothing and clothing stores with the express consent of applicant,
presumably because applicant believed there would be no likelihood of
confusion with its existing ELIZABETH ARDEN marks.
Opp. No. 91157022
22
cosmetics, does not, as applicant claims, settle the matter.
We must decide whether there is a likelihood of confusion
between opposer's mark ARDEN B as used on the goods and
services for which opposer does have priority, namely women's
clothing and women's clothing stores, and applicant's mark
ARDENBEAUTY for the cosmetic products identified in the
application.
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of confusion
issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion analysis,
however, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). We discuss the relevant factors
below.
Fame or relative strength of opposer's mark
Opposer began using the ARDEN B mark on clothing in 1997.
Opposer first sold the clothing through its WET SEAL clothing
stores at that time. In November 1999, opposer opened its
first ARDEN B store and began selling ARDEN B merchandise
Opp. No. 91157022
23
exclusively through those stores. By February 2001, opposer
was operating about 85 stores in 27 states, with stores located
mostly in shopping malls in major cities such as San Francisco,
Chicago, New York, Miami, Washington, DC and Philadelphia.
Substantially all of the merchandise sold in the ARDEN B stores
is ARDEN B merchandise.
Opposer initially promoted the ARDEN B mark through its
WET SEAL catalogs and later through its ARDEN B catalogues
once the ARDEN B stores opened. Opposer has advertised in
national magazines such as Glamour, InStyle and Cosmopolitan.
The mark is prominently displayed on storefronts and on
clothing labels and packaging for the merchandise.
Opposer has also submitted evidence of sales and
advertising expenditures, although the specific amounts are
confidential. Ms. Nicholas testified as to the advertising
expenses for 1999. She also testified as to sales of ARDEN B
merchandise for each year from 1998 through 2000, and it can be
seen that sales increased dramatically from 1998 to 1999 and
rose again from 1999 to 2000.
The evidence is insufficient to persuade us that opposer's
mark is famous.18 There is no evidence as to how widely or

18 Applicant's assertion that its own mark ARDENBEAUTY is famous is
not supported by the record, and in any event, the fifth du Pont
factor requires consideration of evidence pertaining to "the fame of
the prior mark," which in this case means opposer's mark.

Opp. No. 91157022
24
frequently the product catalogues were distributed; and
insufficient evidence of the extent or frequency of national
exposure of the mark, particularly for the years 2000 and 2001,
and no evidence of national advertising from 2003 forward.
Further, Ms. Nicholas did not testify as to the advertising
expenditures for any years other than 1999, and according to
opposer's advertising budget report for 2000, the amount spent
on advertising dropped significantly in that year. We only
have testimony as to sales figures for a three-year period from
1999-2000. Ms. Nicholas did not testify as to sales for the
more recent years 2001 through 2004.19 The figures for the
three-year period that we do have, while perhaps demonstrating
that opposer achieved some level of success during those years,
do not, however, appear extraordinary on their face and opposer
has not provided a meaningful context for those figures such as
evidence of opposer's market share for the goods. As stated by
the Federal Circuit, "[r]aw numbers of product sales and
advertising expenses may have sufficed in the past to prove
fame of a mark, but raw numbers alone in today's world may be
misleading... . Consequently, some context in which to place
raw statistics is reasonable." Bose Corp. v. QSC Audio Prods.,

19 Opposer submitted over 200 pages of charts containing monthly
breakdowns of sales by individual store and/or piece of merchandise
from September 2000 through December 2003 but did not provide a
figure of its total sales for those years.

Opp. No. 91157022
25
293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). See also
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1457 (TTAB 1998);
and General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270
(TTAB 1992).
While the evidence is insufficient to demonstrate that
opposer's mark is famous, there is, on the other hand, no
evidence that the term ARDEN is commonly used in the clothing
field or that opposer's mark is otherwise weak or entitled to
anything less than a normal scope of protection. In fact, the
term ARDEN appears to be unique in the field.
Similarity of the marks
In determining the similarity or dissimilarity of marks,
we must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See du
Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
While marks must be considered in their entireties, it is
well settled that "there is nothing improper in stating that,
for rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties." In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opp. No. 91157022
26
Applicant's mark is ARDENBEAUTY in typed or standard
character form. Opposer's mark is ARDEN B in the stylized form
shown below.

When we compare the two marks in their entireties, giving
appropriate weight to the features thereof, we find that the
marks, while obviously not identical, are similar in sound,
appearance, meaning and commercial impression, and that the
similarities in the marks outweigh their differences.
The marks ARDEN B and ARDENBEAUTY are similar in sound.
The identical first word ARDEN is followed in applicant's mark
by a word that has the same beginning letter and sound as the
"B" following ARDEN in opposer's mark.
As for appearance, although ARDENBEAUTY is presented as a
compound term, the mark clearly would be viewed as being
comprised of two individual words, and the term ARDEN still
makes a visual impact apart from the word BEAUTY. Further the
stylization of ARDEN B is minimal and insufficient to
distinguish the two marks. In any event, because applicant's
mark ARDENBEAUTY is presented in typed or standard character
form, the wording could reasonably be displayed in the same
block letter form as ARDEN B, thereby increasing the visual
similarity of the two marks. See, e.g., Cunningham v. Laser
Opp. No. 91157022
27
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000) (typed drawings are not limited to any particular
rendition of the mark). See also Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
The marks are also similar in meaning and commercial
impression. Both marks consist in significant part of the
identical term, ARDEN. The only evidence of record regarding
the meaning of ARDEN is that of a surname, which would pertain
to both marks.20 While it is unusual for a surname to be
followed by a single letter, as in opposer's mark ARDEN B, the
ARDEN portion of the mark still makes a surname impression.
The name ARDEN is followed in applicant's mark by the word
BEAUTY. That word, as applicant recognizes and the third-party
registrations submitted by applicant show, has a descriptive or
at least a well understood meaning in relation to beauty care
products, and is less significant than ARDEN in creating the
mark's commercial impression. See In re National Data Corp.,
supra. Moreover, the ARDEN name is the first word purchasers
will see or hear when encountering either mark and it is

20 The surname meaning of ARDEN is derived from applicant's evidence
concerning ELIZABETH ARDEN. The fact that ARDEN is a surname does
not automatically render the mark weak or entitled to only a narrow
scope of protection. Hunt Foods & Indus., Inc. v. Gerson Stewart
Corp., 367 F.2d 431, 151 USPQ 350, 352 (CCPA 1966) ("Section
2(d)...does not set forth special rules regarding the registration of
marks involving surnames in determining the issue of likelihood of
confusion"). Furthermore, as we noted earlier, there is no evidence
that ARDEN is commonly used or otherwise weak in the relevant field.
Opp. No. 91157022
28
therefore more likely to have a greater impact on purchasers
and be remembered by them when they encounter the two marks at
different times. See Presto Products Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895 (TTAB 1988). The significance of the
letter "B" in the context of ARDEN B is ambiguous. Because its
meaning is not readily apparent, purchasers may view ARDEN B as
simply an abbreviated version of the full term ARDENBEAUTY or
they may assume that ARDEN B and ARDENBEAUTY are slight
variations of the same mark.
Relatedness of the goods and/or services
In our analysis of this factor, we turn first to a
comparison of applicant's cosmetic products, which include
fragrances, and opposer's retail women's clothing store
services.21 It is settled that the likelihood of confusion may
result from the use by different parties of the same or similar
marks in connection with goods, on the one hand, and services
which deal with or are related to those goods, on the other.
See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988) and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB
1983). See also J. Thomas McCarthy, Trademarks and Unfair

21 Applicant contends that because opposer did not allege in the
notice of opposition that the goods and services offered under ARDEN
B are similar or related to those of applicant, opposer has waived
that argument. Opposer is not required to specifically plead every
factual component of a likelihood of confusion claim. It is
sufficient to generally plead the claim as opposer has done in this
case.
Opp. No. 91157022
29
Competition §24:25 (2006) ("[w]here the services consist of
retail sales services, likelihood of confusion is found when
another mark is used on goods which are commonly sold through
such a retail outlet.").
We find that the parties' goods and services are related.
Opposer has introduced evidence that women's and junior's
contemporary clothing chains such as BCBG, BEBE, ANTHROPOLOGIE,
BANANA REPUBLIC, and FOREVER 21, stores which Ms. Nicholas
identified as opposer's competitors, sell both clothing and
collateral products such as fragrances or other beauty care
products. Further, the evidence shows clothing stores sell the
collateral products either under the same marks or variations
of the store marks. For example, BEBE sells perfume under the
mark BEBE and ANTHROPOLOGIE sells lip gloss under the mark
ANTHROPOLOGIE; whereas BANANA REPUBLIC sells bath and shower
scrub under the mark BANANA W REPUBLIC, BCBG sells scented soap
under the mark BCBGirls, and FOREVER 21 sells nail polish under
the mark XXI.
We also find that women's clothing and fragrances are
closely related, complementary products. It is clear that
these products are used together for the same purpose, to
enhance physical appeal and create an overall fashion image.
Applicant's witness, Mr. Rolleston identified at least three
companies, CALVIN KLEIN, CHANEL and BCBG that sell both
Opp. No. 91157022
30
clothing and fragrances under their house marks. Mr. Rolleston
also admitted that a relationship "clearly exists" (Dep., p.
80) between brands of women's clothing and fragrances,
indicating that it is not uncommon for both clothing and
fragrance products to come from the same source, if not under
the same marks.
While the evidence is not overwhelming in quantity, it is
sufficient to persuade us that women's clothing and fragrances
are commercially related goods.22
Customers and cost
The customers for women's clothing and women's clothing
stores would be the same or at least overlap with the customers
who would purchase applicant's fragrances and other cosmetics.
Opposer's target market is young women in their mid-to-late
twenties who are looking for clothing that, as described by Ms.
Nicholas, is "more hip than classic." Dep., p. 75. As there
are no restrictions in the classes of purchasers for
applicant's cosmetics, the purchasers must be deemed to
encompass all the usual purchasers for cosmetics, including the

22 We also note that a number of cases have recognized the
interrelationship between clothing and beauty aids such as fragrance
products and cosmetics, including Edison Brothers Stores Inc. v.
Cosmair Inc., 651 F.Supp. 1547, 2 USPQ2d 1013 (S.D.N.Y. 1987); Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989); Seligman & Latz, Inc. v. Merit Mercantile Corporation, 222
USPQ 720 (TTAB 1984); Clairol Incorporated v. Topaz Hosiery Mills
Inc., 161 USPQ 545 (TTAB 1969); and Catalina, Inc. v. Catalina
Cosmetics Corporation, 161 USPQ 55 (TTAB 1969).

Opp. No. 91157022
31
young women who purchase opposer's clothing and shop in
opposer's clothing stores. See J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889 (Fed.
Cir. 1991); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). In fact, in referring to the "fragrance
profile New Elizabeth Arden Scent" for the product that would
eventually become the ARDENBEAUTY fragrance, Mr. Rolleston
testified that it is "a fragrance for women, women of every age
and every style." Dep., p. 26.
The goods involved in this case are relatively
inexpensive. Opposer sells its ARDEN B clothing at a
"moderate" price point. Dep., p. 74. An ARDEN B product
catalogue shows an average price for dresses ranging from about
$100 to $150. Applicant's identification is not restricted to
any price point or quality and fragrances are certainly
available at a low to moderate price range. Mr. Rolleston
testified that fragrances can be purchased for $45-$50 in
department stores and can be sold for as little as $15 for a
small container in mass retailers such as Wal Mart. We note
that the .5 oz. bottle of perfume from the specialty clothing
store, BANANA REPUBLIC, sells for $12.50.
Given the relatively low cost and the nature of the goods,
the parties’ clothing and fragrances may be subject to impulse
purchase and frequent replacement. It has often been stated
Opp. No. 91157022
32
that purchasers of such products are held to a lesser standard
of purchasing care and, thus, are more likely to be confused as
to the source of the goods. See, e.g., Specialty Brands, Inc.,
748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
Channels of trade
The record shows that the parties advertise and promote
their goods and services in some of the same magazines, such as
Cosmopolitan, Glamour and InStyle magazines. The record also
shows that cosmetics and clothing are typically sold together
in department stores and mass merchandise stores and that they
are also both sold in smaller retail venues such as specialty
clothing stores.
However, opposer's ARDEN B clothing is sold exclusively in
opposer's own ARDEN B clothing stores, and the ARDEN B stores
sell, almost exclusively, opposer's house brand of clothing.
Opposer has expressed no intention of expanding the sale of its
merchandise to include the stores of others or the brands of
merchandise of others. Applicant argues that because opposer's
goods are only sold in opposer's stores, and since opposer is
prohibited by the parties' agreement from selling cosmetics
under the ARDEN B mark, the parties' clothing and cosmetic
products in this case will never in fact be sold together.
Applicant's statement is true, but not compelling. First,
purchasers are not going to be aware that opposer is prohibited
Opp. No. 91157022
33
from selling cosmetic products under the ARDEN B mark.
Further, where products are closely related, merely because the
products in fact would not be sold together would not
necessarily prevent consumers, when encountering the products
in different outlets, from believing the products come from the
same source. See Freedom Savings and Loan Association v.
Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304
(TTAB 1984) ("It is not necessary that goods be competitive or
be sold together or through the same outlets if they can be
shown to be related in some manner that would suggest to
persons encountering them, even at different locations,
sources, or offices a likelihood of common sponsorship").
The respective products in this case are closely related
and the customers for these closely related products are the
same. The young women who shop in department stores and who
would purchase ARDENBEAUTY fragrances would also shop at
opposer's ARDEN B stores and purchase ARDEN B clothing. Also,
as discussed earlier, the evidence shows that it is not unusual
for a company to use a variation of its house mark when
extending its clothing line to fragrances and other cosmetics.
Purchasers would be accustomed to seeing these variations of
house marks and they are therefore likely to believe that ARDEN
B and ARDENBEAUTY identify different but related product lines
from the same source.
Opp. No. 91157022
34
In addition, the two products may not even be purchased at
the same time. Keeping in mind that the parties' clothing and
fragrances are relatively inexpensive, and may be subject to
purchase on impulse, consumers who had previously purchased
opposer's ARDEN B apparel in one of opposer's ARDEN B stores,
upon encountering applicant’s perfume, under the mark
ARDENBEAUTY in a department store, are unlikely to give the
matter great thought, but simply assume because of the
products' complementary nature, that they come from or are in
some way connected with the same company. See Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., supra.
Market interface
We turn finally to the tenth du Pont factor, "the market
interface between applicant and the owner of a prior mark"
which includes consideration of "(b) agreement provisions
designed to preclude confusion, i.e., limitations on continued
use of the marks by each party..." du Pont supra at 567. In
addition to its claim of priority based on the parties'
settlement agreement, which we have found unpersuasive,
applicant also argues that the settlement agreement "negates
any potential likelihood of confusion" between the two marks.
Brief, p. 3. Applicant has not explained how the agreement
"negates" the likelihood of confusion and we do not find that
it does. As we noted earlier, the agreement contains no
Opp. No. 91157022
35
provisions regarding opposer's rights in the term ARDEN alone
or apart from ELIZABETH ARDEN in connection with fragrances and
cosmetics; and nothing precluding opposer from using the mark
ARDEN B, at least in its present form, or from asserting its
rights in this mark for clothing and clothing stores against
applicant. In fact, if anything, the agreement implies that
there would be a likelihood of confusion between certain
"ARDEN" marks for fragrance and cosmetic products on the one
hand, and for clothing and clothing store services on the
other.23
For the reasons stated above, we find that the
contemporaneous use by the parties of ARDEN B and ARDENBEAUTY
in connection with the respective goods and/or services would
be likely to cause confusion.
If applicant should ultimately prevail in any appeal of
this decision, we address the question, noted earlier, of
whether the application would in any event require restriction.

23 Although applicant does not argue this point, we note that there
is no evidence of actual confusion between opposer's and
applicant's marks. However, we consider this factor to be
neutral. As noted earlier, applicant's mark has been in use for a
relatively short period of time and we have insufficient evidence
of the nature and extent of applicant's use during the period of
contemporaneous use. In any event, evidence of actual confusion is
not required in order to establish likelihood of confusion. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Opp. No. 91157022
36
LACK OF BONA FIDE INTENT TO USE
Opposer argues that Mr. Rolleston "testified as to the
particular products on which Applicant intended to use" the
mark; that the original intention was to use the mark only on
the goods listed in Rolleston exhibit 2 ("new fragrance fact
sheet" and "SKU"24 information) and exhibit 31 (total number and
value of products shipped "for period through January 2005"),
namely fragrance, body lotion, creme cleanser, creme deodorant,
deodorant spray, shower gel, posters, shopping bags and scented
cards; and that, in particular, applicant had no bona fide
intent to use the mark on shampoo or candles. It is opposer's
contention that Mr. Rolleston "clearly admitted" that
ARDENBEAUTY was intended for use on fewer than all the goods in
the application.
To begin with, candles are not even included in the
identification of goods. Further, opposer has not shown, prima
facie, by a preponderance of the evidence that applicant lacked
a bona fide intent to use the mark on shampoo or on any of the
other items listed in the identification of goods. The only
evidence which pertains to this issue is the testimony by Mr.
Rolleston (pp. 84-88):
Q. I would like you to look at Rolleston Exhibit 2 and
also Rolleston Exhibit 31. First of all with respect to

24 The SKU refers to a number associated with a specific product type.
Opp. No. 91157022
37
Exhibit No. 2, you testified that this included a listing
of products under various SKUs.

A. Yes, indeed.

Q. And were these the products you intended to sell under
the new brand when you were considering launching a new
brand?

A. These were the basic stock products that we were
considering which is the fundamental line that we put
together.

Q. What other products were you intending to sell under
the trademark, under the new brand?

A. Everything that's listed here.

Q. Anything else that's not listed there?

A. Yes. Eventually we would put these things together in
gift sets, we eventually would make new product types with
it. That's all part of what we do.

With regard to shampoos, Mr. Rolleston testified:
Q. Did you have plans at that time say in early 2002 to
extend the brand, the new brand, to other products?

A. When you say "to other products"?
...

Q. How about shampoos?

A. We might have considered doing it at some point in
time. But at that point I hadn't decided to do a shampoo
or not do a shampoo. I mean, it wouldn't preclude me from
it because of the nature of formulations. That's a
category that I'm familiar with.
...

Q. Did you take any steps to launch ardenbeauty
shampoo?

A. No. I had a body wash.

Opp. No. 91157022
38

With regard to "color" cosmetic products which, according to
Mr. Rolleston, include lipsticks, eyeshadows and foundations,
Mr. Rolleston testified:
Q. What about colors, were you planning to sell
ardenbeauty colors?

A. What I had done were the color stories as I had used
my existing inventories to create color pallets to work
with Catherine Zeta Jones [applicant's spokesperson for
the new ELIZABETH ARDEN product] so that you can recreate
our look through existing inventory.

...

Q. Did you plan to introduce ardenbeauty colors?

A. No. But that wouldn't have precluded me from doing a
color story. I do those all the time. ... But I didn't
specifically plan on creating an ardenbeauty color story
at the time that I created the fragrance. No, I did not.

When Mr. Rolleston was asked "How about an ardenbeauty
potpourri?" he stated "We've made potpourris in the past" and
then referred to his answer to a previous question about
candles wherein he responded that he "would have to go back and
ask one of the girls who works for me who does that. That
could very easily have been considered."
First, opposer never establishes that Mr. Rolleston would
be the sole person in the company responsible for making the
decisions regarding the marketing plans for those products or
the only person to have knowledge about those plans. In fact,
Mr. Rolleston's testimony shows with regard to at least certain
Opp. No. 91157022
39
products, that he clearly was not the only person involved in
the decision-making process. In addition, opposer did not ask
questions which fully explored applicant's actual intent.
Merely because applicant may not have taken steps to actually
launch or introduce a particular product does not mean that
applicant otherwise had no intention to develop or market the
product. Also, many of Mr. Rolleston's responses are ambiguous
and opposer did not follow through on them. For example, it is
unclear what Mr. Rolleston meant by his statement that
applicant planned to "make new product types," or by his
statement that he had not decided "to do a shampoo or not do a
shampoo." Mr. Rolleston's testimony regarding applicant's
plans for the "color stories" is also unclear, as is his
testimony as to when or if the color stories were in fact
created. On the other hand, it is clear from Mr. Rolleston's
testimony that applicant had the capacity to market and/or
manufacture shampoos and color products, having produced them
in the past under different marks, which would tend to
affirmatively rebut any claim by opposer regarding applicant's
intent.
Under the circumstances, the evidence falls far short of
demonstrating by a preponderance of the evidence that applicant
lacked a bona fide intention to use the mark in connection with
any of the identified products.
Opp. No. 91157022
40
Decision: The opposition is dismissed on the ground of
lack of bona fide intention to use the mark, and sustained on
the ground of likelihood of confusion.