Precedential No. 45: Opposer Made Prima Facie Case Under Section 2(d), So TTAB Denies Applicant's Rule 2.132(b) Motion to Dismiss

Oops! Here is another precedential decision, bringing the Board's 2013 tally to 45. At the close of Opposer Skincode's testimony period, Applicant Skin Concept filed a motion to dismiss under Rule 2.132(b). Under that rule, if a plaintiff offers in evidence only copies of USPTO records, the defendant may move for dismissal on the ground that, upon the law and the facts, the plaintiff has shown no right to relief. If the motion is denied, the defendant may proceed to offer its evidence. The Board denied Skin Concept's motion, finding that Skincode, which had relied only on USPTO records, had made out a prima facie case of likelihood of confusion under Section 2(d). Skincode AG v. Skin Concept AG, 109 USPQ2d 1325 (TTAB 2013) [precedential].

Skin Concept sought to register the mark SWISSCODE for "[s]oap; perfumery, essential oils, cosmetics, hair lotions; dentifrices." Skincode opposed, claiming likelihood of confusion with its previously used and registered mark SKINCODE 2 & Design (shown above) for "soaps, cosmetics, all adapted for use on the skin and the scalp." Skincode also claimed likelihood of dilution under Section 43(c).

Skincode attached to its notice of opposition a copy of its pleaded registration printed from the electronic database records of the USPTO, showing the current status and title of the registration. It did not submit any additional evidence. [Since Skincode offered no evidence regarding its common law use of its mark, and failed to provide any evidence of fame, the Board dismissed its dilution claim and any claim of likelihood of confusion based on common law rights].

In its motion to dismiss, Skin Concept contended that Skincode had failed to make a prima facie showing of entitlement to relief. In particular, with regard to opposer’s Section 2(d) claim, it argued that the marks at issue are distinctly different because the SKIN and SWISS components of the marks give them entirely different meanings and commercial impressions.

Opposer Skincode asserted that the marks both refer to the Swiss origin of the goods at issue, contending that the "i" in its registered mark is dotted with a “square containing an equilateral cross (or 'plus' sign) in the center [of] which is an obvious representation of the square-shaped flag of Switzerland." Applicant Skin Concept urged that the supposed depiction of a "Swiss flag" was not at all obvious.

The question for the Board was whether opposer’s registration was itself sufficient evidence to establish a prima facie case of likelihood of confusion such that the burden of proof must shift to applicant to present evidence to the contrary. Applying the duPont factors, the Board found that Skincode had presented a prima facie case.

The involved goods are legally identical, since both the application and the cited registration include "soaps" and "cosmetics." The Board must presume that these goods travel through the same, normal channels of trade to the same classes of consumers.

As to the marks, because some of the goods are legally identical, a lesser degree of similarity is necessary to support a finding of likely confusion. The Board observed that the word portions of the marks are similar in appearance and commercial impression in that each mark comprises a two-syllable word that begins with the letter S, has soft “I” vowel sounds in the first syllable, and includes CODE as the second syllable. It is the word portion of the cited mark that is likely to be impressed upon consumers' memories. Moreover, the applied-for mark appears in standard character form, and therefore the Board must consider all manners in which it might be displayed, including in a manner similar to that of the cited mark. The Board found it premature to decide on the connotation of the cross-design element of the cited mark, and likewise premature to decide whether CODE is the dominant portion of each mark.

In view of the actual and presumptive similarities of the marks at issue, and the partially identical goods, we find that opposer has at least made a prima facie case of likelihood of confusion with regard to the pleaded registered mark that dismissal of the opposition is therefore unwarranted.

And so the Board denied the motion to dismiss as to the likelihood of confusion claim based on opposer's registration, and it ordered the proceeding to resume with applicant's testimony period.

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TTABlog note:  Not much new here. How often does a plaintiff submit nothing other than its registration? No Internet evidence, no dictionary definitions? If you were representing applicant, what kind of evidence would you put in?

Text Copyright John L. Welch 2014.