Thursday, February 15, 2007

Precedential No. 11: TTAB Finds "ARDENBEAUTY" for Cosmetics Confusingly Similar to "ARDEN B" for Clothing

In its eleventh precedential decision of 2007, the Board sustained a Section 2(d) opposition to registration of the mark ARDENBEAUTY for fragrance products, cosmetics, and skin and hair care products, finding the mark likely to cause confusion with Opposer Wet Seal's mark ARDEN B, used for women's clothing, footwear, and jewelry, and for retail apparel store services. The Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) [precedential].

Evidentiary Matters: Before getting to the merits, the Board ruled on several evidentiary matters. It struck certain rebuttal evidence as untimely, and refused to consider a number of documents improperly submitted with Opposer's notice of reliance. And it ruled that the unpleaded issue of Applicant FD's bona fide intent to use its mark was tried by the parties with Applicant's implied consent, and therefore would be considered.

Priority: Opposer Wet Seal established first use dates of 1997 for its ARDEN B mark for clothing and accessories, and 1999 for clothing store services. Applicant FD claimed priority based on its long use and registration of its "famous" ELIZABETH ARDEN and/or ARDEN marks for various beauty products and services. FD also introduced nearly 200 third-party registrations in which BEAUTY is disclaimed, arguing that ARDEN is thus the dominant portion of the ARDENBEAUTY mark.

The Board, however, observed that "the standard for tacking is very strict and tacking in general is permitted only in 'rare instances.'" The marks must be "legal equivalents ... they must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both the same mark." That is not the case here. As the Board noted, the fact that two marks are confusingly similar for purposes of a Section 2(d) analysis does not mean they are legal equivalents for tacking purposes. Consequently, Applicant failed to establish use of ARDENBEAUTY prior to its filing date in 2002, and the priority arrow pointed to Opposer.

Likelihood of Confusion: Turning to likelihood of confusion, the Board noted that Wet Seal may be contractually precluded from using the ARDEN B mark on cosmetics. Nonetheless, the issue of likelihood of confusion between the parties' goods remains.

Wet Seal failed in its attempt to prove its mark famous due to insufficient evidence. However, because there was no evidence that ARDEN is commonly used in the clothing field, the mark was entitled to at least the "normal scope of protection."

Comparing ARDENBEAUTY with the ARDEN B mark in the stylized form shown below, the Board found that the "similarities ... outweigh their differences." "[P]urchasers may view ARDEN B as simply an abbreviated version of the full term ARDENBEAUTY or may assume that [they] are slight variations of the same mark."

The Board next found the goods and services of the parties to be related, noting Opposer's evidence that contemporary clothing store chains (like ANTHROPOLOGIE and BANANA REPUBLIC) sell clothing, fragrances, and beauty care products. Moreover, clothing and fragrances are "closely related, complementary products."

The purchasers for the involved products and services overlap, and the goods are relatively inexpensive. The parties' goods "may be subject to impulse purchase and frequent replacement," and in such cases "purchasers are held to a lesser standard of purchasing care and, thus, are more likely to be confused as to the source of the goods."

As to channels of trade, the Board noted that Wet Seal's goods are sold exclusively in ARDEN B stores, and those stores sell almost exclusively ARDEN B brand clothing. Applicant FD therefore contended that, since Wet Seal is prohibited by the parties' agreement from selling cosmetics under the ARDEN B mark, the parties' products will in fact never be sold together. The Board found FD's statement to be "true, but not compelling."

"First, purchasers are not going to be aware that opposer is prohibited 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."

Finally, the Board turned to the seldom-mentioned 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 by each party." FD argued that its agreement with Wet Seal "negates any potential likelihood of confusion," but the Board disagreed.

"... the agreement contains no provisions regarding opposer's rights in the term ARDEN alone or apart from ELIZABETH ARDEN in connection with fragrances and cosmetics; and nothing precludes 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 sum, the Board found confusion likely and sustained the opposition on the Section 2(d) ground.

Lack of Bona Fide Intent to Use: The Board found Wet Seal's evidence insufficient to establish that FD lacked a bona fide intent to use its mark on all the identified goods.

"... 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 that product."

Other testimony was "ambiguous" and "unclear," and the Board therefore dismissed the opposition on this particular ground.

Text Copyright John L. Welch 2007.


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