Friday, December 12, 2008

TTAB Contingently Sustains 2(d) Opposition Tried Under the Accelerated Case Resolution (ACR) Procedure

The parties to this Section 2(d) opposition agreed to try this case under the TTAB's Accelerated Case Resolution (ACR) procedure. The Board contingently sustained the opposition to registration of FACE THE WORLD for skincare and beauty products, finding the mark likely to cause confusion with Opposer's mark FACING THE WORLD, which is the subject of an intent-to-use application for educational and medical services. Facing The World v. Maerovitz, Opposition No. 91181253 (December 9, 2008) [not precedential].

The TTAB's ACR program offers parties the opportunity to streamline the inter partes process so that the Board may render a final decision on what is largely a stipulated record. "In order to take advantage of ACR, the parties must stipulate that, in lieu of trial, the Board can resolve any issues of material fact." The Board promises to render a written decision within fifty (50) days of the filing of the briefs. Opposer submitted a declaration of its attorney, excerpts from third-party websites and Internet articles, and Applicant's discovery responses. Applicant, appearing pro se, neither submitted evidence nor filed a brief.

FACING THE WORLD is a children's charity that provides medical services, "including complex surgeries for children in desperate need to transform their faces and radically change their quality of life." It relied on the constructive use provisions of Section 7(c) to establish priority, based on the filing date of its I-T-U application.

As to likelihood of confusion, the Board found the marks to be "strikingly similar." As to the goods and services, the Board concluded that "opposer's services, most particularly, its medical services, are related to cosmetics."

The evidence shows that physicians, in conjunction with their medical services, frequently sell cosmetic products to their patients and other consumers. One article notes that well known doctors may turn their clinical experience into products backed by their own names and medical credentials. ( com). Another article discusses the fact that Rodeo Drive Plastic Surgery in Los Angeles has been named the exclusive distributor of a line of skincare cosmetics. (

Other articles discussed the "trend among dermatologists and plastic surgeons to offer, in conjunction with their medical services, a line of skin care cosmetics, often times under the physician's names."

The Board noted that there are no limitations in Applicant's identification of goods, nor are Opposer's services limited. Therefore, "Opposer's services and applicant's goods are capable of being sold through the same trade channels to the same classes of purchasers, including consumers who may have undergone cosmetic surgery and who wish, for example, to diminish or hide scarring by using cosmetics."

The Board ruled that, on balance, the du Pont factors weigh in favor of a finding of likelihood of confusion."

However, because Opposer's priority is based on constructive use, the Board will not issue a final judgment until Opposer's registration issues. See Rule 2.129(d). According to the Board, "The time of filing an appeal or for commencing a civil action will run from the date of the present decision." [TTABlog note: That is directly contradictory to the language of Rule 2.129(d), which states that "The time of filing an appeal or for commencing a civil action ... shall run from the date of the entry of the judgment." Why, one might ask, would an appeal be allowed from a contingent decision that may never become a judgment?]

TTABlog comment: Okay, on one side we have a charity and on the other a pro se applicant who submits nothing. Guess who wins? The charity, of course. Cases like this tend to make for badly-reasoned decisions.

Opposer's evidence of the relatedness of its services to Applicant's goods was extremely flimsy. Articles that talk about "trends" and about what some doctors may do are plainly hearsay! So is the supposed "fact" stated on some website that "Rodeo Drive Plastic Surgery in Los Angeles has been named the exclusive distributor of a line of skincare cosmetics." What real proof did Opposer have that any medical charity (not individual doctors) also sells skin care and beauty products? None that I can see.

Text Copyright John L. Welch 2008.


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