Walter Brachmann GmbH & Co. KGv.Pro-Life Importacao E Exportacao LTDA

Trademark Trial and Appeal Board

Jan 6, 2009

No. 91177890 (T.T.A.B. Jan. 6, 2009)

Mailed:
January 6, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Walter Brachmann Gmbh & Co. KG
v.
Pro-Life Importacao E Exportacao LTDA
________

Opposition No. 91177890
against Serial No. 76618831
_______

Gary D. Krugman of Sughrue Mion, PLLC for Walter Brachmann
Gmbh & Co. KG

Michael J. Striker for Pro-Life Importacao E Exportacao LTDA.
_______

Before Hairston, Bucher and Grendel, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pro-Life Importacao E Exportacao LTDA, a corporation of
Brazil, seeks registration on the Principal Register of the
following mark:

for goods identified in the application as follows:
“non-medicated skin care preparations,
namely, creams and gels for facial treatment,
cleansers, moisturizers for the body, suntan
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91177890
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lotions, skin rejuvenating tonics and creams”
in International Class 31

Walter Brachmann Gmbh & Co. KG, a German firm, has
opposed this application on the ground of priority of use
and likelihood of confusion, alleging that applicant’s mark,
when used in connection with the identified goods, so
resembles its BIOMARIS mark (in standard character format),
registered in connection with the following goods:
“perfumes, hair tonic, body and bathing oil,
skin cleansing creams and lotions, body
lotion, skin cream, face lotion, mouthwash,
toothpaste, toilet soaps, hair shampoo,
seaweed and sea-salt solutions for bathing,
after shave cream and after shave lotion” in
International Class 3, and

“sea-salt and herbal sea-salt for food
purposes” in International Class 30;2

as to be likely to cause confusion, to cause mistake or to
deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d).
Applicant, in its answer, denied all the essential
allegations of these claims.

1 Application Serial No. 7661883 was filed on November 1,
2004 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

2 Registration No. 1248763 issued on August 23, 1983; renewed.
Opposition No. 91177890
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I. THE RECORD
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the record includes the pleadings and the file of the
involved application.
The record also includes opposer’s Notice of Reliance
filed on March 21, 2008, making of record a certified copy
of opposer’s registered BIOMARIS mark. On March 21, 2008,
opposer also filed a separate Notice of Reliance pursuant to
Trademark 2.122(e), on an official record, specifically, a
decision in connection with an opposition filed in the European
Community involving opposer and applicant.
Applicant took no testimony and presented no evidence
in support of its position.
II. PRELIMINARY MATTER
Applicant argues that the European Community Decision
of the Office for Harmonization in the Internal Market relied
upon by Opposer should be given no consideration herein, and
has moved to strike this Notice of Reliance filed by Opposer.
Applicant argues that under the Trademark Rules, a Notice
of Reliance may only be filed with respect to publications
available to the general public in libraries or in general
circulation among the public or the relevant segment of the
public. However, opposer responds that this Notice of
Opposition No. 91177890
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Reliance was not filed based upon the portion of the rule
relating to printed publications. Rather, opposer notes that
the relevant material submitted pursuant to the Notice of
Reliance is an official record and is properly introduced
pursuant to the Trademark Rules of Practice.
We find that a certified copy of the EU decision dated
November 30, 2006 was properly introduced as an official
record pursuant to the Trademark Rules of Practice. On the
other hand, this decision has no preclusive effect upon the
instant case, and has little or no probative value in
reaching our likelihood of confusion determination herein.
III. ANALYSIS
A. Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Opposition No. 91177890
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Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has submitted evidence of its ownership of
its BIOMARIS registration. We consider this sufficient to
establish opposer’s interest and, therefore, standing, in
this proceeding.
B. Priority
Because opposer has established that it owns a valid
and subsisting registration of its pleaded mark, priority is
not an issue. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995).
C. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See 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
considering the evidence of record on these factors, we keep
Opposition No. 91177890
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in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Relatedness of the goods, Channels of Trade and Conditions under
which sales are made, and to whom

In looking at the respective identifications of goods,
we agree with opposer that these goods are identical and
otherwise closely related. We must presume that these
inexpensive items will be available to the same groups of
ordinary purchasers through all the same channels of trade.
All of these related du Pont factors favor opposer in this
proceeding.
The Number and Nature of Similar Marks in Use on Similar Goods
Opposer points out that there is no evidence in the record
that any third party uses any similar mark on any goods
whatsoever, including the skin care products of opposer and
applicant. We agree that based on the record herein, this factor
favors opposer.
The Marks
We turn next to examine the similarity of the parties’
marks in their entireties as to appearance, sound,
Opposition No. 91177890
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connotation and commercial impression. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Opposer argues that while applicant’s mark ends in
the letters “-ine” and opposer’s mark ends in the letters
“-is,” the respective marks share the first seven letters
in the same order. As a result, opposer argues that the two
marks are substantially identical visually and in the
commercial impressions they engender and that they are most
similar aurally.
By contrast, applicant argues that the marks are not
aurally similar, and are not visually similar because
applicant’s mark contains a distinctive wave design missing
from opposer’s mark.
We find that these respective marks are not confusingly
similar. Applicant’s mark is highly distinctive visually,
having a wave design within the letter “O.” Although
opposer is correct in noting that the marks are identical as
to the first seven letters, the two marks sound different in
their entireties. As to connotations, applicant’s term
“biomarine” has a readily recognizable meaning, i.e., a
combination of “bio-” (biological) and “marine” (sea). The
record demonstrates no readily apparent connotation
associated with opposer’s “Biomaris” mark. Accordingly, we
Opposition No. 91177890
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find that these marks are dissimilar as to their commercial
impressions. In spite of the fact that the goods are in
part identical, we find that these respective marks are
sufficiently dissimilar that there is no likelihood of
confusion herein. See Kellogg Co. v. Pack’em Enterprises
Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991).
Conclusion
In conclusion, we find that opposer has priority in
view of its registrations of record; that applicant’s goods
are identical in part and otherwise closely-related to
opposer’s goods; that the respective trade channels and
classes of customers are presumably identical; but that the
dissimilarity of the respective marks alone is dispositive
of the likelihood of confusion issue herein.
Decision: The opposition is hereby dismissed and a
Notice of Allowance should issue to applicant in due course.