Precedential No. 14: TTAB Allows Amendment to Applicant's Goods, Dismisses 2(d) Opposition to LUX ENHANCER

The Board has re-designated as precedential its March 22, 2022 decision denying Opposer Conopco's motion to re-open its discovery and trial periods, granting applicant's motion to narrow its identification of goods, and dismissing this Section 2(d) opposition to registration of LUX ENHANCER for certain hair care products in view of Conopco's registered mark LUX (Stylized) for "soap and body cleansing wash." Conopco, Inc. v. Transom Symphony OpCo, LLC DBA Beauty Quest Group, 2022 USPQ2d 504 (TTAB 2022) [precedential].

Motion to Re-open: When Opposer Conopco failed to file its main brief in the case, the Board issued a show cause order under Rule 2.128(a)(3), asking why this failure should not be treated as a concession of the case. Opposer response indicated that it had not lost interest in the case, and so the Board discharged the show cause order.

The Board then turned to opposer's motion to re-open its discovery and testimony periods. The Board observed that one must show "excusable neglect" in order to justify the requested re-opening. Conopco failed to do so. The Board, applying the Supreme Court's Pioneer factors, noted that Conopco waited nineteen months before seeking to re-open the discovery period. It offered no reason why it was not diligent in prosecuting the case. The Board concluded that "the reason for the delay was completely within Conopco’s control and this weighs strongly against finding excusable neglect."

And so the Board denied the motion to re-open.

Likelihood of Confusion: Conopco did manage to get its registration into evidence by way of its original pleading; of course, the opposed application was automatically of record.

The Board unsurprisingly found the involved marks to be "very similar in overall appearance, sound, connotation and commercial impression." As to the goods, the Board found the "non-medicated cosmetic soap" in applicant's original identification of goods to be broad enough to encompass Conopco's "soap and body cleansing wash." These overlapping goods are presumed to travel through the same trade channels to the same classes of consumers.

And so, the Board found confusion likely as to the goods in applicant's original identification of goods.

Applicant's Amended Goods: The Board next turned to applicant's proposed amendment to its identification of goods: namely, "hair care preparations excluding soap and body cleaning wash, and distributed through and used by hair stylists and other hair care professionals." The Board found no evidence that hair care preparations are related to Conopco's soap and body cleansing wash, nor evidence that the normal channels of trade for Conopco's goods would include distribution through hair stylists and other hair care professionals. "Accordingly, although the parties' marks are quite similar, we find that the proposed amendment would obviate a likelihood of confusion between the marks."

However, the Board found that applicant's proposed language “excluding soap and body cleaning wash” fell outside the scope of "hair care preparations." And so it amended applicant’s identification of goods to read: "Hair care preparations distributed through and used by hair stylists and other hair care professionals."

The Board then dismissed the opposition.

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TTABlogger comment: Do you get the feeling that the Board really didn't want opposer to win after its feeble performance? Why was this case deemed precedential? For the lesson that you can't sit on your hands for nineteen months and expect the Board to be sympathetic?

Text Copyright John L. Welch 2022.