Tuesday, April 07, 2015

PANDORA'S for Cosmetics Confusable with Famous Mark PANDORA for Jewelry, Says TTAB

The Board sustained an opposition to registration of the mark PANDORA'S for cosmetics and related retail store services, finding the mark likely to cause confusion with the mark PANDORA for jewelry and related retail services. The fame of opposer's mark and the near identity of the goods weighed heavily in opposer's favor. The Board was unmoved by applicant's lamentations that it was a tiny David in a duel to the death with Goliath. Said the Board, "[w]e have indeed seen corporate bullying, and this is not such a case." Pandora Jewelry, LLC v. Pandora's Makeup Box Inc., Opposition No. 91196078 (April 1, 2015) [not precedential].

Priority was not an issue as to opposer's pleaded registrations, including one for the mark PANDORA in a design form shown in the picture above. Opposer also demonstrated common law use of PANDORA as of 2003, well before the filing date (constructive first use date) of the opposed application.

Opposer's products are sold through a nationwide network of retailers and are advertised and promoted widely in various media. Its sales figures and promotional expenditures are "quite impressive," and it has become one of the most recognizable jewelry brands in the country. The Board found opposer's mark PANDORA to be famous for Section 2(d) purposes, for a wide variety of jewelry products and for retail store services featuring jewelry and other fashion accessories. As we know, fame plays a dominant role in the likelihood of confusion analysis.

As to the marks, not only did opposer establish common law rights in the mark PANDORA, but the word PANDORA was the dominant term in opposer's registered marks. Applicant's adoption of the possessive form is not source-distinguishing. The close similarity between the involved marks weighed strongly in favor of opposer.

The evidence established that jewelry and cosmetics are advertised in the same magazines and sold through the same channels of trade. Applicant argued that the vast majority of opposer's products are expensive, but the Board found that most of the involved products are relatively inexpensive, and might even be purchased on impulse. Moreover, both parties market their goods to the same classes of consumers.

The key issue, then, was the relatedness of the involved goods and services. Applicant seemingly argued that, under established law, jewelry and cosmetics cannot be related. The Board, however, found the question to be one of fact.

Opposer submitted third-party registrations in which the same entities offered both jewelry and cosmetics under the same mark. Website evidence showed that jewelry and cosmetics are offered under the same brand. Women's magazines feature advertising for both types of goods. Witnesses for both parties testified that large department stores often locate the make-up counter quite closely to the jewelry counters. The Board concluded that cosmetics and jewelry are closely related for Section 2(d) purposes.

With regard to retail store services, both parties "are targeting the same demographic for gifts and purchases for the same pot of discretionary income." The Board therefore found the services of the parties to be related.

The Board observed that opposer has been expanding the use of its PANDORA brand beyond jewelry, to include sunglasses, watches, and apparel. Related goods like cosmetics are natural areas of expansion for a jewelry brand.

Although applicant contended that the likelihood of confusion was minimal, the Board found otherwise.

Opposer has invested a great deal of time, effort, and money in building its famous PANDORA brand. From the humble beginnings in 2002 of sales out of the trunk of a car, Opposer has built one of the most recognized jewelry brands in the United States. Should Applicant's mark - nearly identical to opposer's mark - be allowed to register for related goods and services, the potential for customer confusion and damage to Opposer is manifest.

The Board therefore found confusion likely and it sustained the opposition.

Read comments and post your comment here

TTABlog note: The issue of priority was a little murky. Applicant, a Canadian company, defeated opposer Pandora in a trademark battle in Canada, and it claimed use of its mark in the USA beginning in 2000. Footnote 32 addresses the issue, and seems to say that applicant's proof of early use was inadequate or irrelevant. I'm not sure what the phrase "falling through the Looking Glass" is supposed to mean in this context. [I guess I should go ask Alice.] I think it means that, because applicant did not seek to cancel opposer's registrations, priorty was not an issue as to the registered marks and the goods and services in the registrations. But then why mention applicant's constructive first use date at all?

Text Copyright John L. Welch 2015.


At 7:15 AM, Anonymous Anonymous said...

The Opposer's point was that it would be "surreal" for the Applicant to both claim priority and file an application based on 1(b) and 44(e). Honestly, that can happen with foreign clients when either an attorney doesn't ask the right questions or the client forgets to tell the attorney about annual trade shows it participates in in the US, etc. Personally, cosmetics and jewelry are not related goods (unless we are saying woman usually buy both). In most cases outside the "designer" context (e.g., Armani), you don't have people making both. Yes, you can buy both at department store or a large retail store (Macys/Target), but they are not sold side-by-side. The fact that Pandora is moving into sunglasses and clothing accessories IS within the realm of expansion. Makeup? Not so much. Look at Pandora's fellow mid-expensive jewelry competitors. David Yurman does not sell makeup. Ippolita does not sell makeup. Me & Ro does not sell makeup. Pandora Makeup didn't think there was a likelihood of confusion based on the divergent goods until Pandora Jewelry challenged them - that happens all of the time, too. It seems unfair that the Board faults them on this.

At 7:58 AM, Blogger John L. Welch said...

There's nothing "surreal" about filing an intent-to-use application and later proving actual use and claiming priority. Happens all the time. There's no prohibition on doing so. As to your comments about what you think consumers do or don't perceive, I note that the Board has to rule based on the record evidence.

At 11:23 AM, Anonymous Anonymous said...

Seems the applicant was boxed in...

At 2:19 PM, Anonymous Anonymous said...

The Board really had very little evidence of relatedness - their citation to "designer" brands like Armani and Ted Maker London feels disingenuous. Most jewelry designers don't make lipstick. Most lipstick designers don't make jewelry. Consumers don't buy jewelry side by side with lipstick. The fact that they can both be purchased in a large department store/on the internet is not the test.

At 2:59 PM, Blogger matthew h said...

I'm impressed you avoided a Pandora's box quip.


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