Monday, October 27, 2014

TTAB Dismisses Narrowly-Pleaded Section 2(d) Opposition to "Simplicity Hair Oil Blend"

The Board dismissed a Section 2(d) opposition to registration of Simplicity Hair Oil Blend, in standard character form, for "oils for hair conditioning" [HAIR OIL BLEND disclaimed], finding the mark not likely to cause confusion with the registered mark SIMPLICITY for "addin and add-on hair accessories, namely, artificial hair constructed primarily of human hair." Applicant Kelly neither submitted evidence nor filed a brief, and so only the single pleaded registration was considered by the Board.  Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014) [not precedential].

Not surprisingly, the Board found the marks to be similar in connotation and  commercial impression, since SIMPLICITY is the first and dominant portion of the applied-for mark.

As for the goods, Opposer claimed to have broader rights that those provided by its registration. Relying on the "zone of natural expansion" doctrine and on its alleged common law rights, Opposer
asserted use of its mark on shampoos, conditioners, and conditioning oils, and urged that applicant's goods are nearly identical, or within opposer's zone of expansion.

Asserting that applicant had acted in bad faith, opposer pointed out that after the opposition was filed, applicant altered her packaging so that the word "Simplicity" in a vertical display, with the words "Hair Oil Display" greatly reduced in size.

The Board was sympathetic to opposer's position, but opposer had relied only on its registration in its notice of opposition. There was no claim of prior common law use of the mark. Applicant had no notice of such and allegation, and "despite Applicant’s non-participation during the trial of this case, we cannot treat the silence of Applicant qua defendant herein the same as finding that the issue was tried by the consent of the parties."

Moreover, opposer failed to provide adequate evidence that the involved goods are related. Opposer provided copies of its own webpages, showing that opposer sells a variety of hair-related products, but that was not enough to establish that consumers would view the involved goods as related.

[I]n addition to an absence of any notice to Applicant that Opposer would be relying upon possible common law usage of the cited mark on disparate goods, there is no factual basis in this record on which to conclude that oils for hair conditioning would be perceived by consumers of hair extensions as falling within the natural zone of expansion of a manufacturer of wigs and hair pieces.

Since the relatedness of the involved goods was not established, the Board say no need to consider "the complexities of the 'natural expansion' doctrine as an end-around this critical du Pont factor."

And so the Board dismissed the opposition.

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TTABlog comment: It's often difficult for a plaintiff when the defendant adopts the rope-a-dope strategy. It means the plaintiff has to do everything right, with no help from the defendant's errors or actions.

Text Copyright John L. Welch 2014.


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