throbber
THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`jk
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` Mailed: November 9, 2009
`
`Opposition No. 91183919
`
`Boucheron Holding
`
`
`v.
`
`
`Second Wind Consulting, Inc.
`
`
`
`Before Walters, Zervas and Bergsman,
`Administrative Trademark Judges.
`
`By the Board:
`
`
`
`Second Wind Consulting, Inc. (“applicant”) seeks to
`
`register the stylized mark shown below for a wide variety of
`
`personal care, body and beauty products and preparations for
`
`cleansing, hygiene and cosmetic purposes in International
`
`Class 3.1
`
`
`
`Applicant is proceeding pro se in this opposition.
`
` Boucheron Holding (“opposer”) filed an opposition
`
`thereto, alleging the grounds of deceptiveness and false
`
`suggestion of a connection, both under Trademark Act Section
`
`2(a), as well as priority and likelihood of confusion under
`
`Trademark Act Section 2(d). Opposer pleaded ownership and
`
`prior use of the common law mark shown below for “perfume,
`
`

`
`Opposition No. 91183919
`
`
`body lotion, body cream, aftershave, aftershave balm, body
`
`shampoo, deodorant stick for personal use, shower gel, eau
`
`de-toilette, eau de-cologne, deodorants for personal use,
`
`essential oils, oils for cosmetics and toilet purposes, bath
`
`soaps, cosmetic soaps, perfumed soaps, hand soaps, cleansing
`
`milk for toilet purposes, cosmetics, make-up and make-up
`
`removing preparations, cosmetic preparations for skin and
`
`hair care purposes, cosmetic preparations for slimming
`
`purposes, sun-tanning preparations, cosmetic preparations
`
`for baths, beauty masks, hair lotions, cosmetic kits
`
`comprised of lipstick, lip gloss, mascara and eye liner,
`
`cosmetic creams, incense, joss sticks, aftershave lotions,
`
`shaving preparations, nail varnish and shampoos,” in
`
`International Class 3.2
`
`
`
` In its answer, applicant denied the salient allegations
`
`in the notice of opposition.
`
` This proceeding is before the Board for consideration
`
`of 1) applicant’s motion (filed September 1, 2009) for leave
`
`to amend its answer; and 2) opposer’s and applicant’s cross-
`
`
`1 Application Serial No. 77254137, filed August 13, 2007,
`alleging a bona fide intent to use the mark in commerce pursuant
`to Trademark Act Section 1(b).
`2 Opposer also claims Trademark Application Serial No. 77420327,
`filed March 12, 2008, based on Trademark Act Sections 1(a) and
`44(e), and alleging a date of first use of January 1, 1994, and
`date of first use in commerce of January 5, 2005. However, this
`later-filed application may not be the basis for opposer’s claim
`of priority and likelihood of confusion. Thus, the opposition on
`this basis is limited to opposer’s claim of a previously used
`common law mark.
`
`
`
`2
`
`

`
`Opposition No. 91183919
`
`
`motions (filed June 22, 2009 and July 27, 2009,
`
`respectively) for summary judgment. The motions have been
`
`fully briefed.3
`
` Motion for leave to amend answer
`
`Amendments to pleadings in inter partes proceedings
`
`before the Board are governed by Fed. R. Civ. P. 15, made
`
`applicable to Board proceedings by operation of Trademark Rule
`
`2.116(a). Trademark Rule 2.107. After a responsive pleading
`
`has been filed, a party may amend its pleading only by written
`
`consent of every adverse party, or by leave of the Board.
`
`Leave shall be freely given when justice so requires. See
`
`Fed. R. Civ P. 15(a). The Board liberally grants leave to
`
`amend pleadings at any stage of a proceeding when justice so
`
`requires, unless entry of the proposed amendment would violate
`
`settled law or be prejudicial to the rights of the adverse
`
`party or parties. See TBMP § 507.01 (2d ed. rev. 2004). See
`
`also Hurley International LLC v. Volta, 82 USPQ2d 1339, 1341
`
`(TTAB 2007).
`
`
`
`The timing of a motion for leave to amend under Fed. R.
`
`Civ. P. 15(a) is a factor in determining whether the adverse
`
`party would be prejudiced by allowance of the proposed
`
`amendment. The motion should be filed as soon as any ground
`
`for such amendment becomes apparent. See Commodore
`
`
`3 Applicant’s brief in response to opposer’s motion for summary
`judgment exceeds the page limit set forth in Trademark Rule
`2.127(a). Furthermore, opposer objected to applicant’s brief on
`this basis. Accordingly, we have not considered the brief. See
`Saint-Gobain Corp. v. Minnesota Mining and Mfg., Co., 66 USPQ2d
`1220 (TTAB 2003). Nevertheless, we have still reached the merits
`of opposer’s motion based on the evidence submitted.
`
`
`
`3
`
`

`
`Opposition No. 91183919
`
`
`Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503
`
`(TTAB 1993).
`
` Where the moving party seeks to add a new claim or
`
`defense, and the proposed pleading thereof is legally
`
`insufficient, or would serve no useful purpose, the Board
`
`normally will deny the motion for leave to amend. See
`
`Octocom Systems Inc. v. Houston Computer Services Inc., 918
`
`F.2d 937, 16 USPQ2d 1783, 1785 (Fed. Cir. 1990).
`
` By its motion, applicant seeks leave to add “a new
`
`defense of fraud,” “a new defense of abandonment,” “a new
`
`defense that the Opposer’s mark is an unregistrable primary
`
`(sic) geographically deceptive (sic) misdescriptive mark,”
`
`and “a new defense, in that the Opposer does not sell JAIPUR
`
`(attributed to the specimen) submitted with the application
`
`in United States.”
`
` To the extent that applicant was dissatisfied with any
`
`discovery responses it obtained, applicant never sought
`
`Board intervention by way of, for example, a motion to
`
`compel discovery under Trademark Rule 2.120(e), or took
`
`other appropriate action designed to address discovery
`
`issues.
`
` Turning to the timing of the motion to amend, we note
`
`that applicant filed its motion to amend after opposer filed
`
`its summary judgment motion, after applicant filed its
`
`cross-motion for summary judgment, and after opposer’s
`
`testimony period commenced. Applicant did not seek to amend
`
`
`
`4
`
`

`
`Opposition No. 91183919
`
`
`its answer until over four months after discovery closed.
`
`Thus, applicant’s motion is untimely.
`
` Further, at this late date in the proceeding, allowing
`
`an amended answer raising new defenses would significantly
`
`delay this proceeding and would prejudice opposer.
`
` In view of these circumstances, applicant’s motion for
`
`leave to file an amended answer is denied. Therefore, we do
`
`not address the viability of applicant’s proposed
`
`“defenses.” The answer filed on June 16, 2008 remains
`
`applicant’s operative answer.
`
`
`
`Motions for summary judgment
`
` A party is entitled to summary judgment when it has
`
`demonstrated that there are no genuine issues as to any
`
`material facts, and that it is entitled to judgment as a
`
`matter of law. Fed. R. Civ. P. 56(c). The evidence must be
`
`viewed in a light favorable to the nonmoving party, and all
`
`justifiable inferences are to be drawn in the nonmovant’s
`
`favor. Opryland USA Inc. v. The Great American Music Show,
`
`Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
`
`A party seeking summary judgment bears the initial burden
`
`of demonstrating the absence of any genuine issue of material
`
`fact, and its entitlement to judgment as a matter of law. See
`
`Celotex Corp. v. Catrett, 477 U.S. 317 (1986). When the
`
`moving party’s motion is supported by evidence sufficient, if
`
`unopposed, to indicate that there is no genuine issue of
`
`material fact, and that the moving party is entitled to
`
`judgment, the burden shifts to the nonmoving party to
`
`
`
`5
`
`

`
`Opposition No. 91183919
`
`
`demonstrate the existence of issues of material fact which
`
`must be resolved at trial. The nonmoving party may not rest
`
`on mere denials or conclusory assertions, but rather must
`
`proffer countering evidence, by affidavit or as otherwise
`
`provided in Fed. R. Civ. P. 56, showing that there is a
`
`genuine factual dispute for trial. See Fed. R. Civ. P. 56(e);
`
`Wright, Miller & Kane, 10B Fed. Prac. & Pro. Civ. 3d § 2739
`
`(2007).
`
`Applicant’s cross-motion for summary judgment
`
`In its motion, applicant states that it seeks judgment on
`
`its assertion that “[O]pposer and their (sic) Attorneys
`
`knowingly and willfully committed fraud and application fraud
`
`(sic) from the original application date to the present.”
`
`Applicant’s motion seeks judgment on a defense it later sought
`
`to add by way of an amended answer. However, we have denied
`
`applicant’s motion to amend, and the proposed amended answer
`
`has not been accepted. Thus, applicant may not obtain summary
`
`judgment on an unasserted defense. Fed. R. Civ. P. 56(a) and
`
`56(b). See also Paramount Pictures Corp. v. White, 31 USPQ2d
`
`1768, 1772 (TTAB 1994), and cases cited therein. The Board
`
`has long recognized that summary judgment is not appropriate
`
`on an unpleaded issue. See TBMP § 528.07(a) (2d ed. rev.
`
`2004).4
`
`In view thereof, applicant’s cross-motion for summary
`
`judgment is denied.
`
`
`4 We note that, in any event, any action taken by opposer in connection
`with its pending application is irrelevant to this proceeding, as
`opposer’s Section 2(d) claim is based on its common law use of its mark.
`
`
`
`6
`
`

`
`Opposition No. 91183919
`
`
`Opposer’s motion for summary judgment
`
` In ex parte examination, opposer’s pleaded application
`
`has been suspended pending resolution of the registrability
`
`of applicant’s mark. In view thereof, opposer has a
`
`reasonable belief that it will be damaged by the
`
`registration of applicant’s mark, and thus has standing to
`
`raise its claims in this proceeding. See Cunningham v.
`
`Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
`
`2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
`
`F.2d 1024, 213 USPQ 185 (CCPA 1982).
`
` Opposer’s summary judgment motion is grounded in its
`
`claim of priority based on its common law rights and a
`
`likelihood of confusion. Opposer does not seek summary
`
`judgment on its Section 2(a) claims. With regard to
`
`priority, opposer asserts that it has used its mark “since
`
`long before filing its pending JAIPUR Application,” and
`
`specifically, that it has used its mark “in the United
`
`States since 1994.” In support of its claim, opposer
`
`submits, inter alia,
`
`1) the declaration of Diego Balo, Vice President of Finance
`
`(USA) for YSL Beaute, Inc., a distributor of opposer’s
`
`products in the U.S. under license, attesting that opposer
`
`has distributed fragrances in the U.S. “since at least
`
`1994;” and
`
`2) opposer’s verified responses and objections to
`
`Applicant’s Revised First Set of Interrogatories, wherein
`
`opposer stated, in response to Interrogatory No. 6, that
`
`
`
`7
`
`

`
`Opposition No. 91183919
`
`
`“the goods under the JAIPUR mark were first sold in January
`
`1994.”
`
` In his declaration, Mr. Balo attests that opposer’s
`
`fragrance line of the JAIPUR brand has consistently ranked
`
`high among all men’s fragrances based on sales, and in
`
`support thereof relies on the Balo declaration.5 Paragraph
`
`9 of the declaration identifies the marketplace for
`
`opposer’s “JAIPUR Homme” fragrance line, based on sales
`
`among all men’s fragrances from 2005 to the first quarter of
`
`2009, and indicates that opposer made sales of such products
`
`in each year from 2005 through early 2009.
`
` In the declaration, Mr. Balo also states that he
`
`prepared certain exhibits to opposer’s summary judgment
`
`motion, namely, sales reports of gross sales of JAIPUR brand
`
`products in the United States by store for 2005 through
`
`March 2009, and sales reports of gross sales of JAIPUR brand
`
`products “with product detail,” in the United States by
`
`store for 2005 through March 2009. These materials,
`
`Exhibits H and I to opposer’s motion, have been designated
`
`as confidential. Exhibit H is a twenty-page business record
`
`showing gross sales, by specific retail establishments, of
`
`opposer’s various JAIPUR women’s perfumes for 2005 through a
`
`portion of 2009.6
`
`
`5 Inasmuch as opposer designated as confidential portions of said
`declaration, as well as certain exhibits referenced therein, we
`refer to the relevant matters in general terms.
`6 Much of Exhibit I is illegible, and, to the extent it is
`illegible, Exhibit I has not been considered in reaching our
`decision herein.
`
`
`
`8
`
`

`
`Opposition No. 91183919
`
`
` Also in the declaration, Mr. Balo attests to his
`
`personal knowledge of Exhibits P and Q to opposer’s summary
`
`judgment motion, and states that such exhibits are kept by
`
`YSL Beaute, Inc. in the ordinary course of business. The
`
`exhibits have been designated as confidential. Exhibit P,
`
`entitled “Retail Sales History,” provides retail sales for
`
`opposer’s products sold under the JAIPUR mark, by store
`
`name, or store name and location, for the years 1997, 1998,
`
`1999 and 2000. Exhibit Q consists of opposer’s “Set Sell-
`
`In/Sell-Through” data sheets, one covering 2002, 2003 and
`
`2004 through July, and another covering 2004, 2005, and 2006
`
`through June. At footnote 4 to its brief, opposer explains
`
`that “Sell-In Data represents shipments of JAIPUR brand
`
`products to stores,” and “Sell-Through Data represents
`
`JAIPUR brand products sold to the consumer.”
`
` In its responses to applicant’s Revised First Set of
`
`Interrogatories, Interrogatory No. 5, opposer identified the
`
`JAIPUR products it currently distributes or sells in the
`
`United States as “eau de parfum, eau de parfum refill, eau
`
`de parfum refillable spray, eau de toilette spray, eau de
`
`toilette spray (sic), aftershave lotion, aftershave balm,
`
`deodorant stick, shower gel, and shampoo,” and stated in
`
`response to Interrogatory No. 6 that these listed products
`
`“were first sold in January 1994.”
`
` In addition to relying on this evidence, opposer
`
`asserts that applicant “is not using its JAIPUR proposed
`
`mark in commerce or otherwise,” and submits in support
`
`
`
`9
`
`

`
`Opposition No. 91183919
`
`
`thereof, inter alia, applicant’s responses to opposer’s
`
`Requests for Admissions Nos. 8 and 9, which read as follows:
`
`8. Admit that applicant did not use Applicant’s Mark
`
`before August 8, 2007. ANSWER: ADMITTED.
`
`9. Admit that Applicant does not currently use
`
`Applicant’s Mark on any product offered for sale.
`
`ANSWER: ADMITTED.
`
` This evidence establishes opposer’s use of its mark in
`
`connection with personal fragrance products, aftershave
`
`lotion, aftershave balm, deodorant stick, shower gel, and
`
`shampoo since at least prior to the filing date of the
`
`opposed application, which is the earliest date upon which
`
`applicant may rely in this case. In its response to
`
`opposer’s motion, applicant has not put forth evidence that
`
`raises a genuine issue with respect to opposer’s established
`
`common law use of its mark. Therefore, on this record,
`
`opposer has demonstrated that there is no genuine issue of
`
`material fact with respect to its priority of use of its
`
`mark in connection with personal fragrance products,
`
`aftershave lotion, aftershave balm, deodorant stick, shower
`
`gel, and shampoo.
`
`Turning to the likelihood of confusion analysis under
`
`Trademark Act Section 2(d), this determination 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 and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
`
`See also, In re Majestic Distilling Co., Inc., 315 F.3d
`
`
`
`10
`
`

`
`Opposition No. 91183919
`
`
`1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
`
`confusion analysis, however, two key considerations are the
`
`similarities between the marks and the similarities between
`
`the goods and/or 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).
`
`With respect to the similarity of the marks, we look to
`
`the marks in their entireties as to appearance, sound,
`
`connotation and commercial impression. The test is not
`
`whether the marks can be distinguished when subjected to a
`
`side-by-side comparison, but rather whether the marks are
`
`sufficiently similar in their overall commercial impressions
`
`that confusion as to the source of the goods offered under
`
`the respective marks is likely to result. The focus is on
`
`the perception and recollection of the average purchaser,
`
`who normally retains a general rather than specific
`
`impression of trademarks. See Chemetron Corp. v. Morris
`
`Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air
`
`Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
`
` Applicant has admitted the following requests for
`
`admissions propounded by opposer:
`
`11. Admit that Applicant’s Mark consists of the term
`
`“JAIPUR.”
`
`12. Admit that Opposer’s Mark consists of the term
`
`“JAIPUR.”
`
`
`
`11
`
`

`
`Opposition No. 91183919
`
`
`13. Admit that Applicant’s Mark is identical in sight and
`
`sound to Opposer’s Mark.
`
`A visual difference between the parties’ marks consists of
`
`the transposition of the umlaut from the I (in opposer’s
`
`mark), to the U (in applicant’s mark), an insignificant
`
`distinction. While applicant’s mark is stylized, the
`
`stylization is very minimal. Moreover, opposer has not
`
`claimed any stylization or particular font in connection
`
`with the use of its mark. In view of this, as well as
`
`applicant’s admission noted herein, the visual differences
`
`between the marks are insignificant, and there is no genuine
`
`issue of material fact that the marks are substantially
`
`similar.
`
` Turning to the similarity of the goods, where, as here,
`
`opposer is relying upon common law use of its mark,
`
`consideration of the question of likelihood of confusion
`
`must be confined to the specific goods on which the mark has
`
`been used, as well as the specific trade channels and actual
`
`purchasers or potential purchasers, as disclosed by the
`
`evidence, without the benefit of those presumptions
`
`ordinarily allowed a registration under Trademark Act
`
`Section 7(b). See Asplundh Tree Expert Company v.
`
`Defibrator Fiberboard Aktiebolag, 208 USPQ 954, 959 (TTAB
`
`1980).
`
` Opposer has established prior use of its mark in
`
`connection with personal fragrance products, aftershave
`
`lotion, aftershave balm, deodorant stick, shower gel, and
`
`
`
`12
`
`

`
`Opposition No. 91183919
`
`
`shampoo. Applicant’s identified goods include the
`
`following: body spray used as a personal deodorant and as
`
`fragrance, perfumed creams, perfumed powders, perfumed
`
`talcum powder, aftershave lotions, aftershave balms,
`
`deodorant for personal use, shower and bath gel, and hair
`
`shampoo. Applicant’s recitation includes, and opposer uses
`
`its mark on, the following identical goods: aftershave
`
`lotion and balm, shower gel and shampoo. There is also no
`
`question that applicant’s “body spray used as a fragrance”
`
`is encompassed by opposer’s “personal fragrance products.”
`
`The fact that some of the products listed in the application
`
`are identical to some of opposer’s products is sufficient to
`
`support a finding that there is a likelihood of confusion.
`
`Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
`
`F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
`
`confusion must be found if there is likely to be confusion
`
`with respect to any items that come within the
`
`identification of goods in the application).
`
` Applicant fails to present arguments or evidence
`
`indicating that there is a genuine issue of fact with
`
`respect to the identical nature of the noted goods. For
`
`example, applicant argues that any proximity between the
`
`parties’ goods is “substantially outweighed by other
`
`factors,” including that opposer’s goods are “not sold or
`
`readily available in the United States;” and that an
`
`informal email survey of what appear to be customer service
`
`representatives of various retail establishments, regarding
`
`
`
`13
`
`

`
`Opposition No. 91183919
`
`
`whether they sell a specific “Jaipur by Boucheron”
`
`fragrance, demonstrates the lack of availability of
`
`opposer’s products in the United States. These arguments
`
`pertain to applicant’s unpleaded “defenses” of abandonment
`
`and non-use and are not relevant to our likelihood of
`
`confusion analysis. Moreover, we have found that there are
`
`no genuine issues of material fact with respect to opposer’s
`
`use and priority.
`
` Turning to the channels of trade and class of purchasers,
`
`the evidence of opposer’s common law use of its mark clearly
`
`establishes that opposer sells its products to consumers
`
`through various listed retail establishments. There is no
`
`question that this is a normal trade channel and class of
`
`purchaser for these types of goods. Applicant’s argument that
`
`its products “are ethnic friendly, of majority natural
`
`ingredients (sic),” while opposer “does not make ethnic
`
`friendly products,” is unpersuasive. As we found herein,
`
`several of the parties’ products are identical, and applicant’s
`
`application includes no limitation with respect to channels of
`
`trade or classes of purchasers. Thus, it is presumed that the
`
`application encompasses all goods of the type identified, that
`
`they move in all normal channels of trade, and that they are
`
`available to all potential customers. See Hewlett-Packard Co.
`
`v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
`
`2002). The one trade channel, i.e., retail establishments, and
`
`purchaser, i.e., the general consumer, established in
`
`connection with opposer’s use of its mark on its goods is,
`
`
`
`14
`
`

`
`Opposition No. 91183919
`
`
`therefore, encompassed by the possibly broader trade channels
`
`and purchasers of applicant’s identical goods. In other words,
`
`there is no genuine issue of material fact that the trade
`
`channels and purchasers of these identical goods are the same
`
`or, at least, overlapping.
`
` Based on the totality of the evidence, we find that the
`
`record on summary judgment supports the conclusion that
`
`there remain no genuine issues that opposer has prior use of
`
`its mark in connection with goods that are identical to
`
`goods listed in the application, as noted herein; that the
`
`marks are substantially similar; and that at least some of
`
`the trade channels and classes of purchasers of the parties’
`
`identical goods are the same. Opposer has met its burden of
`
`demonstrating, on motion for summary judgment, that there is
`
`no genuine issue with respect to its priority of use, and
`
`with respect to the likelihood of confusion as to the source
`
`of the parties’ goods under Trademark Act Section 2(d).
`
` In view thereof, opposer’s motion for summary judgment is
`
`granted. The opposition is sustained on the ground of priority
`
`and likelihood of confusion, and registration to applicant is
`
`refused.
`
` However, opposer has also asserted grounds of opposition
`
`under Section 2(a) of the Trademark Act. Opposer is allowed
`
`twenty (20) days from the mailing date of this order in which
`
`to file a paper with the Board indicating that it wishes to go
`
`forward in this proceeding with respect to its grounds for
`
`
`
`15
`
`

`
`Opposition No. 91183919
`
`
`opposition based on Trademark Act Section 2(a), failing which
`
`the Section 2(a) claims will be dismissed.
`
`
`
`16

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