TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`N OF TROY LIMITED
`
`Opposition No. 91160544
`
`
`Applicant. }
`
`Opposer,
`
`v.
`
`CONAIRCIP, INC.
`
`OPPOSER’S BRIEF
`
`Introduction
`
`Opposer, Helen of Troy, hereby submits a Brief in support of its opposition to
`
`Applicant's, CONAIRCIP,
`
`Inc. application for registration of the trademark “CERAMIC
`
`PULSE”. Registration of the mark would become a source of injury and damage to the Opposer.
`
`Registration of the mark would be likely to cause confusion among consumers and inhibit
`
`Opposer's ongoing efforts to naturally broaden and expand the products bearing its registered
`
`mark, “PULSE TECHNOLOGY”.
`
`Opposefs Mark and Applicant's Mark Are Similar as to Appearance, Sound,
`Connotation and Commercial Impression.
`
`Both marks in the Opposition have the word "PULSE" as the dominant feature of
`
`the mark. Applicant has disclaimed the exclusive right to use the word "CERAMIC" apart from
`
`the mark "CERAMIC PULSE", attesting to the descriptive and weak nature of the word
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`N OF TROY LIMITED
`
`Opposition No. 91160544
`
`
`Applicant. }
`
`Opposer,
`
`v.
`
`CONAIRCIP, INC.
`
`OPPOSER’S BRIEF
`
`Introduction
`
`Opposer, Helen of Troy, hereby submits a Brief in support of its opposition to
`
`Applicant's, CONAIRCIP,
`
`Inc. application for registration of the trademark “CERAMIC
`
`PULSE”. Registration of the mark would become a source of injury and damage to the Opposer.
`
`Registration of the mark would be likely to cause confusion among consumers and inhibit
`
`Opposer's ongoing efforts to naturally broaden and expand the products bearing its registered
`
`mark, “PULSE TECHNOLOGY”.
`
`Opposefs Mark and Applicant's Mark Are Similar as to Appearance, Sound,
`Connotation and Commercial Impression.
`
`Both marks in the Opposition have the word "PULSE" as the dominant feature of
`
`the mark. Applicant has disclaimed the exclusive right to use the word "CERAMIC" apart from
`
`the mark "CERAMIC PULSE", attesting to the descriptive and weak nature of the word
`
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`08-03-2005
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`US. Patent amomrm MailRi:p1D: #22
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`"CERAMIC" and highlighting the fact that the term "PULSE" is in fact, the dominant portion of
`
`the mark. Likewise, the term "TECHNOLOGY" in Opposer's mark has been disclaimed apart
`
`from the mark "PULSE TECHNOLOGY", again establishing that the term "PULSE" is the
`
`dominant part of the mark. Moreover, as exhibited by the evidence in this Opposition, Opposer
`
`sells product under the mark “PULSE TECHNOLOGY” that bears the word ‘ceramic’, so that
`
`the addition of the term ‘ceramic’ cannot distinguish a mark from Opposer’s mark. Exhibit A
`
`proves Opposer’s marketing of goods using the mark “PULSE TECHNOLOGY” concurrently
`
`with the word ‘ceramic’.
`
`Opposer’s use of the Mark appeared as early as March, 1995 (Opposer’s Response
`
`to Interrogatory No. 1)
`
`and Applicant admits not using the mark prior to August 8, 2000
`
`(Response to Request for Admission No. 2). Opposer’s Registration for the mark “PULSE
`
`TECHNOLOGY” issued August 8, 2000 and is now incontestable. Therefor, there is no issue as
`
`to first use of the mark. Copies of these Responses, entered into Evidence in this Opposition, are
`
`attached as Exhibit B.
`
`Because the two marks share the identical dominant portions, the two marks, in
`
`their entireties, are similar as to appearance, sound and commercial impression and confusion
`
`between the two as to source of the goods is likely.
`
`The Nature of the Goods of Opposer's and Applicant's Marks Are Similar.
`
`Opposer's mark, "CERAMIC PULSE", is for electric hair curling irons and heat
`
`controllers sold as a component therewith, in International Class 9. Applicant's mark is applied
`
`to electric specialty hair styling irons, namely flat irons, wave plates, crimp plates and electric
`
`
`
`-3_
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`hair curling irons in Int. Class 9, hair dryers ir1 Class 1] and non-electric hair brushes in Class 21.
`
`The goods are identical with respect to hair curling irons and very similar in relation to styling
`
`irons, hair dryers and hair brushes. These goods often appear together in Catalogs, such as the
`
`advertisement submitted as evidence in the Opposition and attached as Exhibit C. These
`
`advertisements show various types of hair irons, hair dryers and other hair styling tools
`
`advertised together. Often, these goods are used simultaneously as hair is combed while being
`
`dried or styled with an iron. All goods are marketed in the same price range and are all used by
`
`consumers in the stylizing of hair. The similarity of the nature of the goods will inevitably lead
`
`to confusion with respect to the sources of these goods by consumers.
`
`The Marks Use Similar Trade Channels.
`
`Goods bearing Applicant's and Opposer‘s marks utilize the same channels of trade.
`
`The goods are advertised in the same trade magazines and are sold in the same retail outlets,
`
`commonly side by side on the shelf. The goods associated with Applicant's and Opposer's marks
`
`travel in the same channels of commerce. Both Applicant and Opposer advertise goods in
`
`professional trade magazines; See Applicant’s Response to Interrogatory No. 4 and Opposer’s
`
`Response to Interrogatory No. 11, copies attached as Exhibit D.
`
`Therefor, confusion
`
`therebetween is likely and inevitable.
`
`The Buyers of Goods Associated with the Present Cited Marks Are Similar.
`
`Any consumer who styles their own or other‘s hair utilizes styling irons, hair
`
`dryers and brushes. The goods are relatively inexpensive and expected to last a few years before
`
`
`
`-4-
`
`being replaced. Because of these factors, buyers are not likely to conduct extensive research
`
`before making their purchase. Because buyers of goods associated with Opposer’s and
`
`Applicant's marks do so under similar motivations and considerations, confusion between the
`
`marks is likely.
`
`Conclusion
`
`Opposer has used and is currently using the Mark “PULSE TECHNOLOGY”
`
`prior in time to Applicant’s adoption of the confusingly similar mark “CERAMIC PULSE”. For
`
`the foregoing reasons, Opposer requests that the Board deny registration of the mark “CERAMIC
`
`PULSE” to Applicant.
`
`ll‘ 3 (onto
`
`C-
`Date
`
`HELEN OF TROY LIMITED
`
`by
`Stewart L. Gitler
`
`HOFFMAN, WASSON & GITLER, PC
`
`Counsel for Applicant
`2461 South Clark Street
`
`Suite 522
`
`Arlington, VA 22202
`(703) 415-0100
`
`sgit1er@hwg1aw.com
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing OPPOSER'S BRIEF
`
`was served on Counsel for Applicant, by first class mail, postage
`
`prepaid,
`
`this 3rd day of August, 2006, as follows:
`
`Richard A. Margulies, Esq.
`ConairCIP, Inc.
`
`One Cummings Point Road
`
`Stamford, CT
`
`06902
`
`3'3-IDOL:
`Date
`
`Stewart L. Gitler
`
`Counsel for Opposer
`HELEN OF TROY LIMITED
`
`HOFFMAN, WASSON & GITLER,
`2461 South Clark Street
`Suite 522
`
`PC
`
`Arlington, VA
`703.415.0100
`
`22202
`
`sgitler@hwglaw.com
`
`Attorney's Docket: TO-9020.COS/cat
`
`
`
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`
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`oaooa I-iuanonw Asaiguiaunnn. IPFIIIZEI
`
`EXHIBIT
`
`E
`
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`
`
`
`'0)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HELEN OF TROY LIMITED
`
`Opposer,
`
`v.
`
`CONAIRCIP,
`
`INC.
`
`Applicant.
`
`‘iiiiiiiiiiii
`
`Opposition No. 91160544
`
`0PPOSER'S RESPONSE TO APPLICANT'S FIRST
`SET OF INTERROGATORIES
`
`In response to Applicant's First Set of Interrogatories
`
`to Opposer, Opposer, Helen of Troy Limited,
`
`responds as follows:
`
`INTERROGATORY N0. 1:
`
`Identify with particularity any products sold by Opposer
`
`bearing or in connection with Opposer's Mark and the dates during
`
`which each of the products were sold or distributed in the United
`States.
`
`RESPONSE TO INTERROGATORY NO. 1:
`
`Electric hair curling irons and heat controllers sold as
`
`a component therewith, sold at least as early as March, 1995.
`
`INTERROGATORI NO. 2:
`
`Identify and describe the responsibilities, duties and
`
`dates of
`
`tenure of all employees known to the Oppose: who were
`
`and/or presently involved in:
`
`(a)
`
`(b)
`
`the selection of 0pposer's Mark; and
`
`the
`
`advertising,
`
`sale
`
`and/or distribution of
`
`products hearing or connected with Opposer’s Mark.
`
`EX}HBTT
`
`i__
`
`
`
`REQUEST FOR ADMISSION NO. 2
`
`Admit that Applicant’s use ofthe mark, “CERAMIC PULSE,” anywhere, was
`subsequent to August 8, 2000.
`
`RESPONSE TO REQUEST FOR ADMISSION NO. 2
`
`Admitted.
`
`Dated: November 5, 2004
`
`Respectfully submitted,
`
`CONAIR CORPORATION
`
`,
`'
`By:
`Richard A. Margulies
`Vice President & General Counsel
`Conair Corporation
`1 Cummings Point Road
`Stamford, CT 06902
`Telephone:
`(203) 351-9088
`Facsimile:
`(203) 975-4658
`
`
`
`
`
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`
`.z GETS HOT, STAYS HOT —
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`9“95HIUlIflflofCu'pfi'fiU
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