Thursday, May 26, 2011

Parties Choose ACR, TTAB Finds SOLARIN Not Confusingly Similar to SOLARCAINE for Sun/Tanning Products

The parties opted for the Board's Accelerated Case Resolution (ACR) procedure in lieu of trial, in this Section 2(d) opposition to registration of the mark SOLARIN for "self-tanning preparations." Opposer alleged likelihood of confusion with its registered mark SOLARCAINE for medicinal sunburn preparations and moisturizing skin lotion. In a mere eight pages, the Board dismissed the opposition, finding the marks "simply too dissimilar to support a finding of likelihood of confusion." Schering-Plough HealthCare Products, Inc. v. Western Holdings, LLC, Opposition No. 91187375 (April 25, 2011) [not precedential].

The parties filed a stipulation (here) setting forth their agreement on ACR discovery, procedural and evidentiary submissions, and briefing. The evidence comprised notices of reliance and testimonial declarations.

Applicant submitted 19 third-party registrations for marks incorporating the word "solar" in connection with products related to sun exposure. Third-party registrations may be considered "in the same manner as a dictionary to show a possible meaning or significance of the word." The Board found that "solar" is highly suggestive for the involved products, and therefore the appearance of "solar" in each mark "is an insufficient basis in which to predicate a holding that the marks are similar, especially considering the different suffixes of each mark."

We find, having given due consideration to the fame of opposer's mark, and notwithstanding all the other factors in opposer's favor including the similarity of the goods, channels of trade and classes of consumers, that the marks in this case are simply too dissimilar to support a finding of likelihood of confusion.

And so the Board dismissed the opposition.

TTABlog comment: Are the goods that similar? Can one get a sunburn from a self-tanning preparation?

And what about the fame of Opposer's mark? That certainly got short shrift - or no shrift at all.

Anyway, make note of this case because you may want to borrow the form of the stipulations if you ever proceed via ACR.

Text Copyright John L. Welch 2011.


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