Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products, Says TTAB
Despite Applicant Louis Vuitton's attempt to sidestep the refusal by narrowing its identified channels of trade, the Board affirmed a Section 2(d) refusal to register the mark APOGÉE for perfumery products "for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." The Board found the mark confusable with the registered mark APHOGEE for hair care preparations. In re Louis Vuitton Malletier, Serial No. 79165769 (February 2, 2018) [not precedential] (Opinion by Judge Angela Lykos).
The marks: The Board found the marks to be similar in appearance, sound, connotation and commercial impression. "[E]ven if consumers were to perceive Applicant’s mark APOGÉE as the French word for “height,” because the marks are so alike in appearance and could be pronounced similarly, it is likely that consumers would perceive the cited mark as having the same meaning and commercial impression."
The goods: The record evidence showed that "it is not uncommon for perfumery and hair care products to be sold under the same trademark." The Board concluded that the involved products "are related, complementary items intended to be used together as part of one’s beauty care regime."
Applicant contended that "Registrant has no nexus to the alchemic ambit of luxury French perfume," and argued that Registrant’s goods are limited to professional grade products. Irrelevant, said the Board, since there are no such limitations in the application and registration at issue.
Channels of trade: A key issue in the appeal concerned whether the trade channel restrictions in the application - “sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network” - eliminate any likelihood of confusion.
Because the cited registration has no restriction on channels of trade, the Board must presume that registrant's hair care products travel in all trade channels appropriate for these goods, including traditional brick-and mortar and online department stores, and direct business-to-consumer (B2C) websites offering for sale hair care products and perfumes to the general public.
The Board agreed with applicant that Louis Vuitton's own stores and websites "are specialized trade channels that do not overlap with the ordinary channels of trade for Registrant’s products." However, that is not the case with regard to "Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network." Since high-end retail stores often sell the types of goods at issue, they are an appropriate trade channel and therefore one in which registrant’s goods may travel. This factor favored a finding of likely confusion.
Conditions of sale: There are no restrictions in the application or cited registration as to purchasers or price points. Even assuming, as applicant asserts, that its perfumes are purchased by sophisticated and discriminating consumers, even careful purchasers are likely to be confused when highly similar marks are used in connection with related goods.
Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.
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TTABlog comment: Suppose applicant LV filed a new application limiting the goods to perfume sold only in Louis Vuitton Malletier stores?
Text Copyright John L. Welch 2018.
posted by John L. Welch @ 2/05/2018
6 comments
6 Comments:
Unfortunately I've found that the more Board decisions I read, the less faith I have in the Board.
Here, the Board first found that the limitation to Louis Vuitton's identification restricting its goods to those "sold only within Louis Vuitton Malletier stores [and] on Louis Vuitton Malletier's website" is sufficient to avoid confusion. Specifically, the Board stated (page 12) that those "are specialized trade channels that do not overlap with the ordinary channels of trade for Registrant's products."
But then the Board held otherwise with respect to the restriction limiting LV's goods to those sold "within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." Specifically, the Board found this was a trade channel "in which we presume Registrant's goods may travel. Indeed, there is no evidence to suggest that the trade channels are mutually exclusive."
So in the Board's view, an LV store is a non-overlapping trade channel, but if that LV store is located within another store, it overlaps? That view seems to treat the LV store as nothing more than another aisle within the larger store, and not, you know, a store within a store.
I have no connection to LV or its attorneys so I don't really care about the outcome, but it bothers me that the Board apparently gave so little consideration to a point that it viewed as pivotal to the outcome. And to top it off, the Board then cited a 50-year-old case for the proposition that various toiletry products are generally sold through the same outlets to the same classes of purchasers, as if that finding of fact from 1968, which did not even involve a store-within-a-store, somehow supports its decision.
What is a "store-within-a-store"? Is it a separate unit with its own entrance and walls, or just a section of the store without any particular physical delineation other than a sign on the wall?
A store within a store is typically where one company leases space within a retailer to sell its specialty goods under its own brand. Maybe one of the best-known examples is a Starbucks Coffee within a Barnes & Noble. Here’s a Wharton article about the store-within-a-store concept: http://knowledge.wharton.upenn.edu/article/the-economic-incentives-of-the-store-within-a-store-retail-model/.
I believe one of the essential features of the store-within-a-store concept is that the consumer *knows* he or she is shopping within a separate “store,” because that’s part of the attraction. As this Time article about Samsung within Best Buy states (http://business.time.com/2013/04/08/can-the-boutique-store-within-a-store-concept-save-big-box-retailers-from-extinction/), “When successful, a store within the store will also improve the appeal of both brands among consumers and other businesses alike.” And “Stores-within-stores make the most sense when you have stand-alone brands that people recognize and have an affinity to…”
I guess we need to look at the record to see whether "store-within-a-store" was explained or defined. In any case, why not just shorten the identification to LV stores and website. A "store-within-a-store" is still a store.
Is the Ralph Lauren section in Macy's a "store-within-a-store?" In your Starbucks example, you have to pay the Starbuck's cashier. In Macy's you can drag your RL products to any Macy's cash register.
I didn’t review every paper but based on my limited review, neither the applicant nor the examining attorney introduced evidence regarding the “store-within-store” language. Be that as it may, the Board held that “there is no evidence to suggest that the trade channels are mutually exclusive. We cannot conclude that there would be no overlapping channels of trade between Applicant’s and Registrant’s goods.” The Board thus framed its finding as a double negative, but I believe that gets the burden of proof backwards because the Board’s findings of fact under the du Pont factors must be supported by substantial evidence.
So, I believe the proper question is: does substantial evidence support the Board’s finding of fact under the third du Pont factor that the normal channels of trade for registrant’s goods would be “within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network”? Since I don’t see any evidence to support that conclusion, in my opinion there is not substantial evidence.
Well, maybe the Board was trying to say that an LV store-within-a-store would nonetheless be located inside another retailer (Macy’s, Nordstrom’s, etc.) where registrant’s goods could be sold. Putting aside that that seems to negate the purpose of the store-within-a-store concept, I don’t think that reasoning would be consistent with Federal Circuit precedent regarding channels of trade where goods are sold within the same establishment, which appears to require evidence that the goods are “sold in close proximity to one another” in order to be relevant under the third du Pont factor. See Recot Inc. v. M.C. Becton, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000) (“[Opposer] asserts that the Board erred in failing to give it any benefit under the DuPont factor that considers channels of trade. Since the goods to which the marks are applied in this case are sold in like channels of trade, such as supermarkets, [opposer] argues that it should have received credit for its position under the channels of trade consideration. The Board did not weigh this factor in [opposer’s] favor, because the law is that products should not be deemed related simply because they are sold in the same kind of establishments. Absent some evidence, of which there is none, that the products are sold in close proximity to one another, we discern no error in the Board’s finding.”).
I didn’t review every paper but based on my limited review, neither the applicant nor the examining attorney introduced evidence regarding the “store-within-store” language. Be that as it may, the Board held that “there is no evidence to suggest that the trade channels are mutually exclusive. We cannot conclude that there would be no overlapping channels of trade between Applicant’s and Registrant’s goods.” The Board thus framed its finding as a double negative, but I believe that gets the burden of proof backwards because the Board’s findings of fact under the du Pont factors must be supported by substantial evidence.
So, I believe the proper question is: does substantial evidence support the Board’s finding of fact under the third du Pont factor that the normal channels of trade for registrant’s goods would be “within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network”? Since I don’t see any evidence to support that conclusion, in my opinion there is not substantial evidence.
Well, maybe the Board was trying to say that an LV store-within-a-store would nonetheless be located inside another retailer (Macy’s, Nordstrom’s, etc.) where registrant’s goods could be sold. Putting aside that that seems to negate the purpose of the store-within-a-store concept, I don’t think that reasoning would be consistent with Federal Circuit precedent regarding channels of trade where goods are sold within the same establishment, which appears to require evidence that the goods are “sold in close proximity to one another” in order to be relevant under the third du Pont factor. See Recot Inc. v. M.C. Becton, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000) (“[Opposer] asserts that the Board erred in failing to give it any benefit under the DuPont factor that considers channels of trade. Since the goods to which the marks are applied in this case are sold in like channels of trade, such as supermarkets, [opposer] argues that it should have received credit for its position under the channels of trade consideration. The Board did not weigh this factor in [opposer’s] favor, because the law is that products should not be deemed related simply because they are sold in the same kind of establishments. Absent some evidence, of which there is none, that the products are sold in close proximity to one another, we discern no error in the Board’s finding.”).
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