Friday, March 14, 2008

TTAB Reverses 2(a) Refusal of "L'OREAL PARIS" for Aloe Vera Drinks: PTO Fails to Show False Connection with French Cosmetics Company

Canadian Robert Victor Marcon, appearing pro se, successfully fended off a Section 2(a) refusal of his application to register the mark L'OREAL PARIS for "aloe vera drinks." The PTO maintained that the mark falsely suggests a connection with the French cosmetics company L'Oreal, S.A., but it failed to meet its burden to prove that the French company "is of sufficient fame or reputation to consumers in the United States" that such a connection would be presumed. In re Marcon, Serial No. 76596736 (March 6, 2008) [not precedential].

In contending that L'Oreal is "world-famous," the PTO relied on a Wikipedia entry, on three websites controlled by the French company, and on excerpts from the NEXIS database. The Wikipedia evidence, however, accompanied the PTO's denial of Applicant's request for reconsideration of the refusal; since Applicant did not have a chance to rebut the Wikipedia evidence, the evidence was accorded no probative value. See In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007).

The websites were of limited value because they were owned by L'Oreal and "it would be an easy matter for the owner of a website to include information suited to its own position, whether or not it was true." [TTABlog comment: even if the websites were owned by another entity, wouldn't the statements regarding L'Oreal's fame be hearsay anyway?]. The LEXIS excerpts were few in number and only indirectly bore on the issue at hand.

Similarly, other evidence regarding L'Oreal, like registrations for the mark L'OREAL and reports of activities in Australia, were of no value in proving fame in the U.S.

Looking at all the evidence, the Board found that the PTO did not establish L'Oreal's fame or reputation and thus had not met its burden of proof. The Board noted the PTO's "limited facilities for acquiring evidence" and suggested that "on a different and more complete record, such as might be adduced in an inter partes proceeding," a different outcome might result.

TTABlog comments: Marcon's corresponding Canadian trademark application for L'OREAL PARIS has been opposed by ... guess who?

Marcon has filed 18 other U.S. applications, for such marks as BAYER, HEINEKEN, BUDWEISER, NESTLE, CHANEL, and SOUTHERN COMFORT. The BAYER (breath fresheners) application is on appeal, while the HEINEKEN (meat juices) application remains pending.

Text Copyright John L. Welch 2008.


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