Product Brands SRL

This Opinion is Not a
Precedent of the TTAB

Mailed: February 28, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Product Brands SRL
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Serial No. 86165262
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Kevin A. Thompson of Ladas & Parry LLP,
for Product Brands SRL.

Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.

_____

Before Wellington, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Product Brands SRL (“Applicant”) seeks registration on the Principal Register of

the mark depicted below for “Cosmetics, makeup, nail polish and preparations for the

care of the nails,” in International Class 3.1

1Application Serial No. 86165262 was filed on January 14, 2014, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation a bona fide intent to use the mark in
commerce. The application includes the following description of the mark: “The mark consists
of the stylized word ‘VALMY’. Above the ‘MY’ portion is a design comprised of an upside down
tear drop with curved elements at the bottom and with a sideways diamond appearing below.”
Color is not claimed as a feature of the mark.
Serial No. 86165262

The Trademark Examining Attorney refused registration of Applicant’s mark

under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of

confusion with Registration No. 1300075 for the typed2 mark CHRISTINE VALMY

for, inter alia:

cosmetics-namely, makeup base, bronzer, facial powder,
facial blush and brush, contour shading makeup,
foundation facial cream, blemish cover sticks, compressed
facial powder, lipsticks, lip liner pencils, lip liner pencil
refills, lip gloss, rouge, eye liners, mascaras, eyebrow
pencils, eyebrow pencil refills, lash thickener, eye shadow,
eye cleansing pads, nail polish, nail gloss, eyelashes;
brushes as part of makeup kit3

in International Class 3.

After the Trademark Examining Attorney made the refusal final, Applicant

appealed to this Board. We affirm the refusal to register.

I. Likelihood of Confusion

Our determination of the issue of likelihood of confusion is based on an analysis

of all of the probative facts in evidence that are relevant to the factors set forth in In

re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
3 Registered on the Principal Register on October 16, 1984; renewed. The registration
includes the following statement: “The name ‘Christine Valmy’ identifies a living individual
whose consent is of record.”

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Serial No. 86165262

also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2003). In any likelihood of confusion analysis, two key, though not exclusive,

considerations are the similarities between the marks and the similarities between

the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544

F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Dixie Restaurants Inc., 105 F.3d 1405,

41 USPQ2d 1531 (Fed. Cir. 1997).

A. Similarities Between The Goods; Trade Channels

We first compare the similarities between Applicant’s goods and Registrant’s

goods, including their respective channels of trade and classes of purchasers. Our

determination regarding the similarity of the goods, channels of trade and classes of

purchasers is based on the goods as they are identified in the application and

registration, respectively. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston

Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990); see

also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.

Cir. 2002).

In this case, the goods in Applicant’s application and the cited registration are

identical in part: each includes “cosmetics” and “nail polish.” Because the goods are

identical in part, we must presume that the channels of trade and classes of

purchasers for these goods are the same. See Citigroup Inc. v. Capital City Bank

Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Yawata

Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); American Lebanese

Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d

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Serial No. 86165262

1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,

1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade

and classes of consumers, the Board was entitled to rely on this legal presumption in

determining likelihood of confusion). For each involved class of goods or services in

an application, and here there is only one, it is sufficient for a refusal based on

likelihood of confusion that relatedness is established as to any item encompassed by

the recitation of goods or services. Primrose Ret. Cmtys., LLC v. Edward Rose Senior

Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly, Inc. v.

Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)) (“likelihood of

confusion must be found as to the entire class if there is likely to be confusion with

respect to any [good] that comes within the recitation of [goods] in that class.”).

Accordingly, the second and third du Pont factors regarding the goods, and the

trade channels and classes of purchasers to whom the goods are offered, heavily favor

a finding of likelihood of confusion.

B. The Marks

We next consider the first du Pont factor, that is, whether Applicant’s VALMY

and design mark and Registrant’s CHRISTINE VALMY mark are similar when

viewed in their entireties in terms of appearance, sound, connotation and overall

commercial impression. See Stone Lion, 110 USPQ2d at 1160 (quoting Palm Bay

Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

USPQ2d 1689, 1691 (Fed. Cir. 2005)). In comparing the marks, we are mindful that

where, as here, the goods are in part identical, the degree of similarity between the

marks necessary to find likelihood of confusion need not be as great as where there

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Serial No. 86165262

is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning

LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate

Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.

1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);

Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325

(TTAB 2007). The test under the first du Pont factor is not whether the marks can be

distinguished when subjected to a side-by-side comparison, but rather whether the

marks are sufficiently similar in terms of their overall commercial impression that

confusion as to the source of the goods offered under the respective marks is likely to

result. In re i.am.symbolic, LLC, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (citing

Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed.

Cir. 2012) (finding sufficient similarity when “persons who encounter the marks

would be likely to assume a connection between the parties”).

Applicant’s mark is . The cited mark is CHRISTINE VALMY.

Applicant argues that there is no likelihood of confusion because “(1) the common

term, VALMY, is more than a surname as it has geographic significance, (2) the Cited

Mark is an inseparable unitary mark, (3) Applicant’s Mark is distinguishable from

the Cited Mark to avoid consumer confusion, and (4) Applicant’s longstanding use

and foreign fame help to distinguish the marks.” 17 TTABVUE 9.

1. Does Applicant’s Mark Have Geographic Significance?

Applicant claims that its mark originated in Venezuela, its goods are produced in

Venezuela, and that Venezuela is Applicant’s biggest market. Id. Applicant contends

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Serial No. 86165262

that its mark would therefore be understood as a reference to the French city of

Valmy, “due to the special association Venezuelans have with the city of Valmy in

France.” 17 TTABVUE 10.

To the extent Venezuelan consumers associate Applicant’s mark with Valmy,

France, this is irrelevant. The test for likelihood of confusion is whether United States

consumers are likely to confuse the cited mark with Applicant’s mark. The only

evidence Applicant submitted to establish that United States consumers might be

aware of Valmy, France are two Wikipedia entries, one giving general information

about Valmy and the other the life history of General Miranda of Venezuela, who

played a role during the French revolution in the battle of Valmy.4 Applicant has not

shown that it has a presence, even an Internet presence, in the United States. Its

application is based on its intent to use the mark, and there is no record evidence of

Applicant advertising to U.S. consumers, or making sales in the United States. Our

focus is on United States consumers, but there is no evidence that consumers

perceive a connection to Valmy, France. See, e.g., Anheuser-Busch, LLC v. Innvopak

4 Applicant submitted Wikipedia entries with its October 16, 2014 and May 10, 2017
Responses to the initial and final Office Actions. These entries bear access dates of 9/23/2014
and 10/14/14. We have considered this Wikipedia evidence, bearing in mind the limitations
inherent in this reference work, because the Examining Attorney had an opportunity to
consider and rebut the evidence. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032
(TTAB 2007); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1208.03 (June 2018) and authorities cited in that section. However, we do not
consider the evidence attached to Applicant’s appeal brief, properly objected to by the
Examining Attorney, that purports to be updated versions of the Wikipedia sections. Such
evidence is untimely. Trademark Rule 2.142(d). When an applicant wants the examining
attorney to consider additional evidence after the filing of an appeal, the proper procedure is
to file a request for remand supported by a showing of good cause. See TBMP § 1207.02 and
authorities cited in that section.

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Serial No. 86165262

Sys. Pty Ltd., 115 USPQ2d 1816. 1823 (TTAB 2015) (finding it “very unlikely that

relevant consumers perceive Opposer’s famous BUDWEISER trademark as

suggesting a connection to what Applicant admits is ‘a small town in Bohemia.’”); cf.

In re Isabella Fiore LLC, 75 USPQ2d 1564, 1568 (TTAB 2005) (“[W]e are concerned

with the meaning of the mark in the United States.”) (citing In re Wickuler-Kupper-

Brauerei KGaA, 221 USPQ 469, 470 n.2 (TTAB 1983) (“It is the surname significance

in the United States which is determinative of the registrability issue”). There is

simply no way to know how many United States consumers have read the Wikipedia

entries.

2. Is Applicant’s Mark Famous?

Applicant argues that because it has used its mark for over 40 years in other

jurisdictions, the mark has become famous overseas. 17 TTABVUE 14-15. Applicant

does not assert that it has used its mark in the United States or that its mark has

become known within the United States. Trademark activity outside the United

States is generally immaterial to ownership of rights in the U.S. See Nat’l Cable

Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 U.S.P.Q.2d 1424

(Fed. Cir. 1991); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed.

Cir. 1990) (“The concept of territoriality is basic to trademark law; trademark rights

exist in each country solely according to that country’s statutory scheme.”); J. Thomas

McCarthy, MCCARTHY ON TRADEMARK AND UNFAIR COMPETITION § 16:21 (5th ed.)

(“Foreign marks are not afforded any protection in the United States until they have

been used in the United States.”); cf. Fiat Group Automobiles S.p.A. v. ISM Inc., 94

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Serial No. 86165262

USPQ2d 1111, 1113 (TTAB 2010) (finding a pleading of use of a mark outside the

United States without any pleading of widespread recognition of the mark within the

United States “is an insufficient basis for a claim of dilution”). Indeed, were

Applicant’s mark well-known within the United States, such fame may engender

reverse confusion with the mark of the cited registration. See In re Shell Oil Co., 992

F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has

been used to describe the situation where a significantly larger or prominent

newcomer ‘saturates the market’ with a trademark that is confusingly similar to that

of a smaller, senior registrant for related goods or services.”). Finally, Applicant’s

assertion that its mark is famous overseas is not supported by the record. Enzo

Biochem Inc. v. Gen Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)

(“Attorney argument is no substitute for evidence.”).

3. Comparison Of The Marks

We turn now to Applicant’s second and third points, that the registered mark is

unitary and that the marks are not confusingly similar.

First, Applicant argues that the cited mark is unitary, and therefore creates “a

single and distinct commercial impression” from Applicant’s composite mark. The

Court of Appeals for the Federal Circuit has set forth the elements of a unitary mark:

A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a unitary
mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own
independent of the meaning of its constituent elements. In
other words, a unitary mark must create a single and
distinct commercial impression.

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Serial No. 86165262

Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir.

1991). Although the constituent elements of the cited mark are combined to form an

individual’s complete name, consumers will readily perceive that the mark is

comprised of first and last names, and that the surname is “Valmy.” Thus, even if the

cited mark is unitary, confusion is still likely based on the type of mark (an

individual’s name), and the shared surname.

In fact, the Federal Circuit and the Board have held that when conflicting marks

consist of a surname and a full name ending in the same surname, confusion is likely.

As the Board stated in Modern Shoe Co. v. B. B. Walker Shoe Co., 170 USPQ 530, 531

(TTAB 1971):

We have here a surname “WALKER” and a full name
“JOHNNIE WALKER”. The full name would represent an
individual. The surname “WALKER” does not per se
identify any particular individual but it does identify any
and all persons who bear that surname, including
“JOHNNIE WALKER”. And, it is not uncommon to identify
an individual by a surname without reference to a first or
Christian name, for example Nixon or Rockefeller in
reference to well-known political figures. Thus, “WALKER”
and “JOHNNIE WALKER” could be regarded as one and
the same individual. These names when used as marks will
create the same impression and such impression is greatly
enhanced because they are used on directly competitive
goods, even as to price. We are of the opinion that the
circumstances give rise to a likelihood of confusion.

Id. (internal citations omitted). See also In re C.H. Hanson Co., 116 USPQ2d 1351,

1353 (TTAB 2015) (holding C.H. HANSON for various hand tools confusingly similar

to HANSON for related hand tools) (citing In re Chatham Int’l, Inc., 380 F.3d 1340,

1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (holding JOSE GASPAR GOLD for

tequila confusingly similar to GASPAR’S ALE for beer and ale)); Harry Winston, Inc.

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Serial No. 86165262

v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1446-47 (TTAB 2014) (holding

BRUCE WINSTON for gemstones and jewelry confusingly similar to WINSTON for

polished diamonds and jewelry); In re SL&E Training Stable Inc., 88 USPQ2d 1216,

1219 (TTAB 2008) (holding SAM EDELMAN for luggage, wallets, and various bags

confusingly similar to EDELMAN for identical goods in part); cf. Nina Ricci S.A.R.L.

v. E.T.F. Enter. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989)

(VITTORIO RICCI for handbags, clothing and retail store services in the field of

clothing is likely to cause confusion with NINA RICCI for clothing and accessories

even though Vittorio Ricci was the name of defendant’s principal); Jack Winter Inc.

v. Lancer of California, Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for

clothing is likely to cause confusion with JACK WINTER for clothing). Thus, because

the marks share the common term VALMY, they are similar in appearance,

pronunciation, connotation and overall commercial impression.

Having considered the similarities between the literal portions of the marks, we

now look at the marks in their entireties. Applicant’s mark includes the design of a

“Flower of Liz.”5 When a mark comprises both a word and a design, the word is

normally accorded greater weight because it would be used by purchasers to request

the goods or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d

1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596

(TTAB 1999)); see also In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905,

5In its brief, Applicant characterizes its design as “a stylized version of the ‘Flower of Liz.’”
17 TTABVUE 7.

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Serial No. 86165262

1908 (Fed. Cir. 2012) (“In the case of a composite mark containing both words and a

design, ‘the verbal portion of the mark is the one most likely to indicate the origin of

the goods to which it is affixed.’”) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82,

218 USPQ 198, 200 (Fed. Cir 1983)). This is not to say that the Board cannot, in

appropriate circumstances, give greater weight to a design component of a composite

mark, such as when the word portion of a mark is highly suggestive or descriptive or

the design is the mark’s most visually prominent feature. Neither exception applies

in this case. “VALMY” is not highly suggestive or descriptive nor is the Flower of Liz

design the mark’s most visually prominent feature, and obviously where an

individual’s name is associated with goods, consumers are most likely to call for the

goods by that individual’s name.

In sum, the marks are similar in their overall appearance, pronunciation,

connotation and commercial impressions. The first du Pont factor favors a finding of

likelihood of confusion.

II. Summary

Consumers familiar with Registrant’s CHRISTINE VALMY cosmetics and nail

care products are likely, when confronted with Applicant’s VALMY and design

cosmetics and nail care products, to believe that the goods are manufactured by the

same company or that Applicant’s goods are sponsored or affiliated with Registrant.

Indeed, consumers familiar with Registrant’s CHRISTINE VALMY line of cosmetics

and nail care products may mistakenly believe that Applicant’s VALMY and design

products represent a different line from the same company. The marks are similar in

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Serial No. 86165262

appearance, pronunciation, connotation and overall commercial impression. There is

a likelihood of confusion.

Decision: The refusal to register Applicant’s mark under Trademark Act

Section 2(d) is affirmed.

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