This Opinion is Not a
Precedent of the TTAB

Mailed: August 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Wella Corp.
v.
It’s a 10, Inc. and It’s a New 10, LLC
_____

Opposition No. 91221520
to Application Serial Nos. 86395361 and 86395889
_____

Thomas M. Williams and Anisha A. Mehta of Ulmer & Berne, LLP
for The Wella Corporation.

Merry L. Biggerstaff and Edward P. Kelly of Tiajoloff & Kelly LLP
for It’s a 10, Inc. and It’s a New 10, LLC.
_____

Before Kuhlke, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant (It’s a 10, Inc. and assignee It’s a New 10, LLC)1 seeks registration of

the mark POTION 10 MIRACLE REPAIR SHAMPOO in standard characters

1 We note the assignment of the entire interest and goodwill of the subject applications from
It’s a 10, Inc. to It’s a New 10, LLC executed, subsequent to the commencement of the
proceeding, on January 3, 2017 recorded at reel/frame 5966/0674. The parties have not
moved to join or substitute a defendant; however, defendant refers to applicant as “It’s a
New 10, LLC (formerly It’s a 10, Inc.)” in its brief. In view thereof, It’s a New 10, LLC is
joined as a party defendant. Western Worldwide Ent. Grp. Inc. v. Qingdao Brewery, 17
USPQ2d 1137, 1138 n.4 (TTAB 1990); Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857
(TTAB 1986).
Opposition No. 91221520

(“REPAIR SHAMPOO” disclaimed) for “Hair care preparations; shampoos,” in

International Class 3;2 and POTION 10 MIRACLE REPAIR CONDITIONER in

standard characters (“REPAIR CONDITIONER” disclaimed) for “Hair care

preparations; hair conditioner,” in International Class 3.3

Opposer, The Wella Corporation, has opposed registration of Applicant’s marks

on the ground that as used in connection with Applicant’s goods, the marks so

resemble Opposer’s previously used and registered mark POTION 9 in typed form4

for “hair care preparations, namely, conditioner and hair styling preparations,” as

to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d). In addition, Opposer asserts a claim of dilution under Section 43(c) of the

Trademark Act, 15 U.S.C. § 1125. By its answer, Applicant admits the allegations

regarding its application filings and denies the remaining allegations.

RECORD

The pleadings and, by operation of the Trademark Rules, the files of the subject

applications are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.

2Application Serial No. 86395361, filed on September 15, 2014, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
3Application Serial No. 86395889, filed on September 16, 2014, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
4 Reg. No. 2301169, issued Dec. 21, 1999. Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. A typed mark is the legal equivalent of a
standard character mark. TMEP § 807.03(i) (April 2017).

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Opposition No. 91221520

Opposer submitted under notice of reliance:5 (1) a printout from the USPTO

Trademark Status & Document Retrieval database (TSDR) consisting of a copy of

its pleaded registration showing its current status and title; (2) printouts from

TSDR consisting of copies of its cancelled registrations for the mark POTION 7 for

“hair care preparations, namely conditioners and styling preparations”; and (3)

copies of printed publications and printouts of web pages wherein its mark POTION

9 is featured.

In addition, Opposer submitted declaration testimony6 with accompanying

exhibits of Emmanuelle Eyraud, Assistant General Counsel, for Professional Beauty

for Coty, Inc.7

Applicant submitted under three notices of reliance: (1) printouts from TSDR

consisting of copies of Applicant’s registrations for marks containing MIRACLE-

formative and 10-formative marks for various hair care preparations;8 (2) copies of

third-party registrations for marks that include the word POTION for various hair

and beauty products;9 and (3) printouts of web pages displaying the word POTION

in connection with third-party hair and beauty products.10

5 15 TTABVUE.
6 Testimony was submitted by declaration pursuant to the parties’ stipulation. 11
TTABVUE.
714 TTABVUE. According to the testimony Opposer is in “transition from a P&G-owned
entity to a Coty-owned entity.” Id. at 3 n.1.
8 19 TTABVUE – 21 TTABVUE. Entries 19-21 are the corrected filings for the notices of
reliance initially filed and listed at entry 17.
9 20 TTABVUE.
10 21 TTABVUE.

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Opposition No. 91221520

In addition, Applicant submitted declaration testimony with accompanying

exhibits of Carolyn Aronson, Applicant’s founder and CEO.11

STANDING/PRIORITY

Opposer’s pleaded registration is summarized as follows:12

Registration No. 2301169 on the Principal Register for the
mark POTION 9 in typed form for “hair care
preparations, namely, conditioner and hair styling
preparations,” in International Class 3, filed on June 19,
1995, issued on December 21, 1999, Sections 8 and 15
combined declaration accepted and acknowledged,
renewed.

Because Opposer’s pleaded registration is of record, is valid and subsisting, and

owned by Opposer, Opposer’s standing to oppose registration of Applicant’s marks is

established and Opposer’s priority is not in issue as to the mark and goods listed in

the registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,

111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d

943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina

Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v. Eunice

King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

We turn to the issue of likelihood of confusion under Section 2(d).

LIKELIHOOD OF CONFUSION

Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563

11 16 TTABVUE.
12 15 TTABVUE at 8-11.

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Opposition No. 91221520

(CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d

1201 (Fed. Cir. 2003) (listing thirteen factors). Two key considerations are the

similarities between the marks and the similarities between the goods. See

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24

(CCPA 1976). Further, “[a]lthough confusion, mistake or deception about source or

origin is the usual issue posed under Section 2(d), any confusion made likely by a

junior user’s mark is cause for refusal; likelihood of confusion encompasses

confusion of sponsorship, affiliation or connection.” Hilson Research, Inc. v. Society

for Human Resource Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993); see also Majestic,

65 USPQ2d at 1205 (“[M]istaken belief that [a good] is manufactured or sponsored

by the same entity … is precisely the mistake that Section 2(d) of the Lanham Act

seeks to prevent.”).

Relatedness of the Goods, Channels of Trade, Classes of Consumers

We turn first to the goods, channels of trade and classes of purchasers. We must

make our determinations under these factors based on the goods as they are recited

in the applications and registration, respectively. Stone Lion Capital Partners, LP v.

Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014). See

also Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16

USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of

registrability of an applicant’s mark must be decided on the basis of the

identification of goods set forth in the application regardless of what the record may

reveal as to the particular nature of an applicant’s goods, the particular channels of

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Opposition No. 91221520

trade or the class of purchasers to which sales of the goods are directed.”) Applicant

presents no argument on these factors.

Applicant’s goods are:

Hair care preparations; shampoos (Application Serial No.
86395361);

Hair care preparations; hair conditioners (Application
Serial No. 86395889).

Opposer’s goods are:

Hair care preparations, namely, conditioner and hair
styling preparations.

Opposer’s “hair care preparations, namely, conditioner” listed in its registration

is identical to Applicant’s “hair conditioners” in Application Serial No. 86395889

and legally identical to Applicant’s “hair care preparations” inasmuch as Applicant’s

“hair care preparations” encompass Opposer’s “conditioner and styling

preparations.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166

(TTAB 2013) (“Under standard examination practice, a semicolon is used to

separate distinct categories of goods or services.”). For the same reason, Opposer’s

“conditioners and styling preparations” are legally identical to Applicant’s “hair care

preparations” in Application Serial No. 86395361. For purposes of our analysis, it is

sufficient that relatedness be established for any item encompassed by the

identification of goods in a particular class in an application. Tuxedo Monopoly, Inc.

v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).

However, we further find that Applicant’s “shampoos” in Application Serial No.

86395361 are closely related to Opposer’s “conditioners.” Such goods are

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Opposition No. 91221520

complementary and routinely sold and used together. In re Martin’s Famous Pastry

Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding MARTIN’S

for wheat bran and honey bread, and MARTIN’S for cheese, likely to cause

confusion). In addition, the record includes several third-party use-based

registrations for hair conditioners and shampoo under a single mark.13 In re

Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel, 29

USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6

USPQ2d 1467, 1470 n.6 (TTAB 1988). Accordingly, we find that Opposer’s goods are

identical in part and legally identical in part to Applicant’s goods in Application

Serial No. 86395889; and legally identical in part and closely related in part to

Applicant’s goods in Application Serial No. 86395361.

Considering the channels of trade and classes of purchasers, because there are

no limitations as to channels of trade or classes of purchasers in either of the

applications or Opposer’s registration, we must presume that Applicant’s and

Opposer’s goods travel through all usual trade channels for such goods and are sold

to all classes of prospective purchasers for those goods. See Paula Payne Prods. Co.

v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973); and In

re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Moreover, because the

parties’ goods are identical (or legally identical), in part, we must presume that they

move through the same channels of trade and are sold to the same classes of

purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.

13 20 TTABVUE.

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Opposition No. 91221520

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); American Lebanese Syrian Associated Charities Inc. v.

Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); Genesco Inc. v.

Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-

part related nature of the parties’ goods, and the lack of any restrictions in the

identifications thereof as to trade channels and purchasers, these clothing items

could be offered and sold to the same classes of purchasers through the same

channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)

(“Because the goods are legally identical, they must be presumed to travel in the

same channels of trade, and be sold to the same class of purchasers”).

In view thereof, the du Pont factors regarding the similarity or dissimilarity of

the goods, channels of trade and classes of consumers weigh in favor of a finding of

likelihood of confusion.

Conditions of Sale

Citing Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,

1558-59 (Fed. Cir. 2001), Opposer argues that consumers purchase hair care

products on impulse and this factor accentuates the significance of the fame and

strength of its mark because “less care may be taken in purchasing a product under

a famous name.” 24 TTABVUE 31 (quoting Specialty Brands, Inc. v. Coffee Bean

Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984)). See also

Kenner Parker Toys Inc. v. Rose Art Indust., Inc., 963 F.2d 350, 22 USPQ2d 1453,

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Opposition No. 91221520

1458 (Fed. Cir. 1992) (where marks are for inexpensive products, this factor

accentuates the significance of a famous mark).

Applicant argues that Opposer has not established that the products at issue are

inexpensive and that Applicant’s products “are all high-end professional hair care

products that are not considered ‘inexpensive’ by consumers and Opposer has made

no showing of [sic] otherwise.” 28 TTABVUE 21. This contention is unpersuasive.

Applicant’s identifications of goods are not limited to expensive hair care products,

but includes within its scope all types of the goods identified, in all relevant price

ranges. Similarly, Opposer’s registration is not limited as to type or price. Although

we do not find Opposer’s mark to be famous, as discussed below, the identified goods

are all common consumer goods that would be purchased by ordinary consumers,

who would exercise only an ordinary degree of care in selecting the goods. We

therefore find the du Pont factor of customer care and conditions of sale to weigh

slightly in Opposer’s favor.

Similarity/Dissimilarity of the Marks

We turn then to the du Pont factor of the similarities and dissimilarities between

Applicant’s marks POTION 10 MIRACLE REPAIR SHAMPOO and POTION 10

MIRACLE REPAIR CONDITIONER, and Opposer’s mark POTION 9. We analyze

“the marks in their entireties as to appearance, sound, connotation and commercial

impression.” Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567). See

also 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

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Opposition No. 91221520

keep in mind that “[w]hen marks would appear on virtually identical goods or

services, the degree of similarity necessary to support a conclusion of likely

confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970

F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).

Opposer argues that their respective marks all begin with the word POTION

and because it is the first portion it is “most likely to be impressed upon the mind of

a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d

1895, 1897 (TTAB 1988); 24 TTABVUE 20. Opposer further contends that POTION

is the dominant element in Applicant’s marks based on its position as the first word

and the disclaimer of the additional wording REPAIR SHAMPOO and REPAIR

CONDITIONER. Moreover, Opposer asserts that both parties’ marks are followed

by numbers and consumers are likely to shorten Applicant’s marks to POTION 10,

bringing the similarity closer. In particular as to connotation Opposer argues:

[B]oth parties use “POTION (number)” to connote a
wondrous or mysterious product consisting of a defined
number of ingredients. As explained by Opposer’s witness,
“Wella markets POTION 9 as a ‘magic’ treatment, hence
the ‘POTION’ element of the POTION 9 Mark. The ‘9’
refers to the 9 essential extracts in the product.” See
Eyraud Decl., 14 TTABVUE 4 at ¶6. Similarly,
Applicant’s Marks are used in the context of a “miracle”
treatment that is used to provide 10 benefits to a product
user’s hair. See Aronson Decl., 16 TTABVUE 2-3 at ¶¶1,
6; see also id. at 8-12 at Ex. A, Ex. B. Thus, the “POTION”
and numerical connotations are sufficiently similar to
elicit confusion.

24 TTABVUE 21-22.

In sum, Opposer argues that the commercial impression is the same because of

the similar format comprised of the word POTION combined with a number that for

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Opposition No. 91221520

both parties refers to a list of features (9 essential extracts for Opposer’s goods and

10 benefits for Applicant’s goods). In addition, Opposer contends that the natural

numerical progression from 9 to 10 enhances the likely confusion as “consumers are

likely to mistakenly believe that their care products sold under the POTION 10

Marks are [the] new-and-improved, or next-generation, versions of POTION 9 hair

care products.” 24 TTABVUE 24 (quoting Eyraud Decl. ¶ 14, 14 TTABVUE 7).

Opposer points to its earlier use of the mark POTION 7 (referring to 7 nutrients in

the product) in connection with hair conditioners and styling preparations to

demonstrate this numerical progression. Eyraud Decl. ¶ 7, 14 TTABVUE 4-5.

Opposer concludes that “the consuming public is likely to associate Applicant’s

POTION 10 hair care products as being a new or better version of POTION 9

products, emanating from the same source” because “[t]he addition of a higher,

consecutive number ‘essentially creates the commercial impression of an upgraded

or higher feature version of the [POTION] brand.’” 24 TTABVUE 25 (quoting In re

York, Ex Parte Appeal No. 76600403, 11 TTABVUE 7-8 (TTAB February 15, 2007)).

Applicant argues that the dominant portion of its mark is the term MIRACLE.

Applicant supports this argument with several of its other registrations containing

the word MIRACLE and asserts that it “has established a family of trademarks

comprised of MIRACLE for the It’s a 10 Miracle Haircare line, which it has used in

connection with its hair products since the inception of its MIRACLE haircare line

in 2006.” Further, Applicant asserts:

It’s a 10 has at least 28 valid and subsisting federal
trademark registrations for marks comprised of

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Opposition No. 91221520

MIRACLE for its hair care line. Every product in It’s a
10’s extensive MIRACLE hair care line bears a trademark
comprised of MIRACLE and the number 10. The Applied
for Marks are part of this haircare line and are a natural
extension of It’s a 10’s family of MIRACLE marks. It is
clear the diluted term POTION was not intended to be the
dominant portion of the Applied for Marks.

28 TTABVUE 9-10.

The family of marks doctrine is unavailable to a defendant as a defense in an

inter partes proceeding. Mag Instrument, Inc. v. The Brinkmann Corp., 96 USPQ2d

1701, 1715 (TTAB 2010). See also Baroid Drilling Fluids Inc. v. Sun Drilling

Products, 24 USPQ2d 1048, 1052 (TTAB 1992). This includes Applicant’s argument

that POTION 10 MIRACLE REPAIR SHAMPOO/CONDITIONER “is part of the

family of trademarks comprised of MIRACLE” because the issue in this case is

whether Applicant’s POTION 10 MIRACLE REPAIR SHAMPOO/CONDITIONER

marks so resemble Opposer’s POTION 9 mark as to be likely to cause confusion, not

whether Applicant has used other MIRACLE-formative marks with the number 10.

Applicant also argues that the number 10 in its marks connotes that “there are

‘10 instant benefits’ in one product and the product itself is a ‘10’ (i.e., great or

perfect) as evidenced by [Applicant’s] house mark IT’S A 10.” 28 TTABVUE 12.

Since the number 9 in Opposer’s mark refers to the number of ingredients,

Applicant argues, the numbers 9 and 10 have different meanings as applied to the

parties’ respective products. 28 TTABVUE 13.

The first part of Applicant’s marks, POTION 10, conveys a meaning as a phrase

separate from the remainder: MIRACLE REPAIR SHAMPOO/CONDITIONER.

Because that unified element is the first part of each mark, it is likely to be the
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Opposition No. 91221520

most memorable, as consumers are more inclined to focus on the first word or words

in a trademark. See Palm Bay, 73 USPQ2d at 1692; In re Morinaga Nyugyo

Kabushiki Kaisha, 120 USPQ2d 1738, 1742 (TTAB 2014) (confusing similarity of

MT. RAINER and MOUNT RAINER marks heightened by placement as first words

of the mark); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d at 1897 (“[I]t is

often the first part of a mark which is most likely to be impressed upon the mind of

a purchaser and remembered”). It is this part, identical in structure to the entirety

of Opposer’s mark POTION 9, which creates similarities in appearance, sound and

connotation. These similarities, combined with the natural progression of the

numbers, create a very similar commercial impression. Contrary to Applicant’s

argument that the number 9 connotes a list of ingredients and the number 10

connotes a list of benefits which presents a distinction between the marks, both

represent a list of features of the product which is very similar. The progression

from 9 to 10 may connote a superior product, or simply the next in a line of

products, as demonstrated by Opposer’s prior mark, POTION 7.

The addition of the term MIRACLE in Applicant’s marks is compatible with the

connotation and commercial impression of something magical created by the word

POTION, and attaches naturally to the descriptive remainder of the marks

(REPAIR SHAMPOO/CONDITIONER). Thus the word MIRACLE in Applicant’s

mark does not overcome the similarities between POTION 9 and the beginning of

Applicant’s mark POTION 10. The additional disclaimed wording REPAIR

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Opposition No. 91221520

SHAMPOO and REPAIR CONDITIONER in Applicant’s marks merely describe the

goods, and do not serve to distinguish source.14

We find that the similarities in appearance, sound, meaning and overall

commercial impression in the marks, outweigh the dissimilarities. Stone Lion

Capital Partners, L.P. v. Lion Capital LLP, 110 USPQ2d at 1161; In re Mighty Leaf

Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010); Kangol

Limited v. Kangaroos U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);

Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395

(Fed. Cir. 1983). This factor weighs in Opposer’s favor.

Strength of Opposer’s Mark

Fame of the Prior Mark

Opposer presents evidence and argument on the fame of its POTION 9 mark. In

determining the strength of a mark, we consider both its inherent strength based on

the nature of the mark itself and its commercial strength, based on the marketplace

recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96

USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its

conceptual strength (distinctiveness) and its marketplace strength.”); Top Tobacco,

L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011)

(the strength of a mark is determined by assessing its inherent strength and its

14In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) ([T]here is
nothing improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on consideration of
the marks in their entireties. … That a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly accepted rationale for giving less
weight to a portion of a mark …”).

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Opposition No. 91221520

commercial strength); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,

1899 (TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83

(4th ed. 2017) (“The first enquiry focuses on the inherent potential of the term at the

time of its first use. The second evaluates the actual customer recognition value of

the mark at the time registration is sought or at the time the mark is asserted in

litigation to prevent another’s use.”). Market strength is the extent to which the

relevant public recognizes a mark as denoting a single source. Tea Board of India v.

Republic of Tea Inc., 80 USPQ2d at 1899. “[A] mark with extensive public

recognition and renown deserves and receives more legal protection than an obscure

or weak mark.” Kenner Parker Toys, Inc. v Rose Art Indus., Inc., 22 USPQ2d at

1456. See also Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d

1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a dominant role in the

likelihood of confusion analysis because famous marks enjoy a broad scope of

protection or exclusivity of use. In the likelihood of confusion context, fame “varies

along a spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v.

Societe des Produits Nestle S.A., 103 USPQ2d at 1440 (quoting Palm Bay, 73

USPQ2d at 1689). See also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 22

USPQ2d at 1456. In view of the extreme deference that is accorded to a famous

mark in terms of the wide latitude of legal protection it receives, and the dominant

role fame plays in the likelihood of confusion analysis, it is the duty of the party

asserting that its mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph

Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing

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Opposition No. 91221520

Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB

2007)).

The conceptual strength of POTION 9 is somewhat diminished by the suggestive

nature of the word “potion” in connection with goods that are mixtures of

ingredients and, as discussed below, its use and registration by third parties for

hair care products. In addition, as explained by Opposer, the number 9 signifies the

number of essential extracts in the product. Nonetheless, Opposer’s mark is

registered on the Principal Register without disclaimer and is accorded all Section

7(b) presumptions, 15 U.S.C. § 1057.

The commercial strength of a mark “may be measured indirectly, among other

things, by the volume of sales and advertising expenditures of the goods or services

traveling under the mark, and by the length of time those indicia of commercial

awareness have been evident.” Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at

1305. In addition, some context in which to place raw statistics may be necessary.

Id. at 1309.

Mr. Eyraud testifies that Opposer: 1) has used the POTION 9 mark since 1993

(14 TTABVUE 5); 2) has actively promoted its mark through advertising, including

in trade and general magazines (in print and online), on its website, and in-store

signage (14 TTABVUE 15-16); and 3) has had substantial sales success (14

TTABVUE 7). The specific advertising and sales evidence was presented under seal.

The advertising figures submitted under seal do not break out spending by

product, so there is no way of knowing the actual amount spent on advertising

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Opposition No. 91221520

POTION 9 products. The sales figures submitted under seal are specific to the

POTION 9 product and are substantial; however, Opposer did not provide evidence

as to the market share for its POTION 9 hair care products (e.g., the substantiality

of sales figures for comparable types of products) to place the impact of its sales

figures in context. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1309.

The only documentary examples of advertising consist of Opposer’s website,

packaging, point of sale displays, and a handful of product catalogs and magazines.

On the other hand, Opposer has used the mark since 1993, and Opposer submitted

evidence of third-party product mentions, including those associated with celebrities

in various magazines. 15 TTABVUE 3-5.15 On balance, although the record does not

support a finding of fame, such that it plays a dominant role, we find that POTION

9 has attained commercial strength for hair care products and accord it a broader

scope of protection despite the weakness of the term POTION discussed below.

The Number and Nature of Similar Marks in Use on Similar Goods

Under the du Pont factor concerning the number and nature of similar marks in

use on similar goods, Applicant addresses the potential weakness of the common

element POTION by submitting excerpts from 43 third-party websites using the

term POTION in connection with hair or other beauty products. The examples with

15Opposer also asserts that its rights in the POTION 9 mark have become incontestable;
however, “the fact that opposer’s federally-registered trademark has achieved incontestable
status means that it is conclusively considered to be valid, but it does not dictate that the
mark is ‘strong’ for purposes of determining likelihood of confusion.” MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION §§ 11:82 and 32:155 (4th ed. 2017).” Safer v. OMS
Inc., 94 USPQ2d 1031, 1036 (TTAB 2010).

– 17 –
Opposition No. 91221520

beauty products (fragrances, lip balm, skin lotion, eyeshadow, nail polish) other

than hair care products have limited probative value. While such goods may be

considered related for purposes of the du Pont factor “the similarity or dissimilarity

and nature of the goods or services as described in an application or registration or

in connection with which a prior mark is in use,” in connection with this du Pont

factor, the dilutive effect is concerned with use on the same or similar goods, and

the effect dissipates as the examples of goods become less similar. There are 17

examples (two are for the same brand Simply Smooth) for hair care products:16

• Sexy Hair Healthy Sexy Hair Pumpkin Potion Leave In Conditioner

• Momo Hair Potion

• Softsheen Carson Optimum Amla Legend Billion Hair Potion

• Milk shake Styling Potion

• Smooth N Shine Olive & Tea Tree Quench & Repair Potion 3’s

• Giovanni 2chic Ultra-Volume Super Potion with Tangerine and Papaya

Butter

• Scruples Texturizing Paste – Urban Potions

• Livon Silky Potion Detangling Hair Fluid

• Davines Oi/Oil Absolute Beautifying Potion

• Pantene Pro-V Heat Shield Heat Potion Serum

• Brocato Vibracolor Fire & Ice Face Prevent Potion

• Simply Smooth Keratin Repartive Magic Potion Blowout

16 21 TTABVUE.

– 18 –
Opposition No. 91221520

• Simply Smooth Xtend Keratin Reparative Magic Potion

• Schwarzkopf BC Bonacure Hairtherapy Oil Potion

• Keratin Complex Style Therapy Glowtion Potion Styling Oil

• EssentialPotions Hair Potion

• Aveda pure abundance hair potion

In addition, Applicant submitted copies of third-party registrations that include

the word POTION in the marks for various hair care and beauty products, as shown

below.17 Marks that include the word POTION for various beauty products are

registered by 30 different registrants. As noted above, the registrations for beauty

care products other than hair care products have less probative value. Only 12 of

these third-party registrations are for hair care products:

Registration No. by Mark Goods
Owner
1683546 GRANDMA’S SECRET Shampoo, conditioner
POTION SUPER GRO and scalp oil hair
(and design) dressing

2766091 OCEAN POTION
(and Skincare oils, namely,
4596411 design) sunblock oils, sunscreen
2724181 oils, self-tanning oils,
2910608 FACE POTION moisturizing oils,
aromatherapy oils,
4657235 OCEAN POTION essential oils for personal
PROTECT AND RENEW use, perfume oils;

17 20 TTABVUE. Registrations issued under Section 66 or 44 of the Trademark Act have
little to no probative value on this issue and are not included in the chart. See Calypso
Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011).

– 19 –
Opposition No. 91221520

skincare lotions, namely,
4596411 OCEAN POTION (and sunblock lotions,
design) sunscreen lotions, self-
tanning lotions,
moisturizing lotions,
after-sun lotions, body
mask lotions, skin lotions,
hair lotions, facial
lotions and body lotions
3223628 KEMI ORGANICS Organic cleansing
REMOVE CLEANSING shampoo
POTION THE
COMPLETE HAIR
CLEANSER (and design
all but KEMI disclaimed)
3316552 ROCKIN’ RINGLETS Hair care preparations
STYLING POTION
(RINGLETS STYLING
POTION disclaimed)
3795015 LOTUS POTIONS Non-medicinal hair
care products, namely,
shampoos, conditions,
gels
3046419 PERFECT POTION (and Soap products, namely,
design) cleansing soap, shaving
soap, soap for personal
use, liquid soap, and
household cleaning soap;
perfume products,
namely, aromatherapy
perfumes; essential oils
for personal use; cosmetic
and hair care products,
namely facial cleansers
and scrubs, body
cleansers and scrubs,
facial toners, facial and
body moisturisers [sic],
lip balms, skin
treatments, body
deodorants, bath oils,
aftershave, shaving oils,
shaving gels, face
colorants, shampoos,

– 20 –
Opposition No. 91221520

hair conditioners, and
hair treatments;
massage oils
4297023 POTION OF THE Body lotions; Hair
TROPICS (and design) lotions
4431793 NATURAL POTIONS Body lotion; Body wash;
FOR YOUR EMOTIONS Lip balm

4656876 After shave lotions; Bath
gels; Bath oils; Bath
salts; Body powder; Body
sprays; Cosmetic
sunscreen preparations;
Deodorant for personal
use; Face powder; Facial
beauty masks; Facial
cleansers; Facial creams;
Facial lotion; Facial
scrubs; Hair
conditioners; Hand
creams; Hand scrubs;
Hand soaps; Make up
removing preparations;
Non-medicated douches;
Perfume oils; Perfumes
and toilet waters;
Perfuming sachets; Pet
care kits comprising
shampoo, conditioner,
body spray; Pet
fragrances; Shampoos;
Shaving creams; Shaving
lotions; Shower and bath
gel; Skin care
preparations, namely,
skin peels; Skin masks;
Skin toners; Talcum
powders; all of the
foregoing made primarily
with natural ingredients
4795704 CASSANDRA’S HAIR Hair conditions; hair
POTION (HAIR POTION oils; hair moisturizers
disclaimed)

– 21 –
Opposition No. 91221520

4655143 LOTIONS & POTIONS Full line of skin care
(LOTIONS disclaimed) products, namely, skin
cleansers, toners, and
moisturizers; facial
treatments, namely,
exfoliators, scrubs,
masques, skin powders,
and skin lightening
preparations; full line of
skin firming products,
namely, non-medicated
skin serums and creams;
full line of body care,
namely, shower gels, bath
gels, bath bubbles,
mineral salts in the
nature of bath salts not
for medical purposes,
body exfoliators, bath oils
and hand creams; full
line of hair care products,
namely, shampoos, hair
conditioners and oil
treatments; full line of
massage care products,
namely, oils and creams;
full line of shaving care
products, namely,
cologne, after shave balm
and shaving gel; full line
of color cosmetic
products, namely, lip
gloss, lipsticks, mascaras,
blush, eye shadows, eye
liners, rouge, foundations
and face powders; full
line of perfume products,
namely, fragrances,
essential oils, room spray,
oils, potpourri, incense,
incense oils, linen sprays,
body mists, hydrating
body sprays, colognes,
essential oils and

– 22 –
Opposition No. 91221520

massage oils
4771494 SCENTED POTIONS Age retardant lotion;
(and design) (SCENTED Aromatic body care
disclaimed) products, namely, body
lotion, shower gel, cuticle
cream, shampoo,
conditioner, non-
medicated lip balm, soap,
body polish, body and foot
scrub and non-medicated
foot cream; Bathing
lotions; Colognes,
perfumes and cosmetics;
Cosmetic preparations,
namely, firming lotions;
Cosmetic sun milk
lotions; Cosmetic suntan
lotions; Eau de perfume;
Essential oils as perfume
for laundry purposes;
Essential oils for
aromatherapy use; Eye
lotions; Face and body
lotions; Facial beauty
masks; Facial cleansers;
Facial emulsions; Facial
lotion; Facial
moisturizers; Facial
washes; Hair lotions;
Hand lotions; Liquid
perfumes; Lotions for
cellulite reduction;
Lotions for face and body
care; Massage lotions;
Oils for perfumes and
scents; Perfume oils;
Perfumed creams;
Perfumes; Perfumes in
solid form; Skin lotion;
Skin lotions; Styling
lotions; Sun care lotions;
Sun-block lotions; Teeth
cleaning lotions; Toning
lotion, for the face, body

– 23 –
Opposition No. 91221520

and hands
4819272 POTION DROPS Organic oils, oil extracts
(DROPS disclaimed) and conventional oils all
for cosmetic purposes,
hair oils, face oils, body
oils

Within this hair care group only two begin with the word POTION (POTION OF

THE TROPICS and design, and POTION DROPS) and none are for a combination

of POTION plus a number. Only one third-party example exists in the record that

incorporates Applicant’s POTION 9 mark: LOVE POTION # 9 for perfume,

referring to the well-known song for different goods.

Even without specifics regarding the extent of sales or promotional efforts

surrounding the third-party marks, third-party registrations coupled with evidence

of third-party use in the form of web pages may be sufficient to show weakness of a

mark where a considerable number of third parties use similar marks in connection

with similar goods or services. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d

1334, 115 USPQ2d 1671, 1674-1675 (Fed. Cir. 2015). See also Jack Wolfskin

Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,

797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (cert. denied January 25,

2016). This combination of third-party registrations and third-party uses may be

“powerful on its face” and must be considered when assessing the strength of

plaintiff’s mark. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d at 1674-75.

Here, none of the registrations appear to coincide with the examples of use. In

addition, there are no examples of the structure POTION plus a number for hair

– 24 –
Opposition No. 91221520

care. Applicant’s reliance on the web page example with SEVEN POTIONS for

beard oil (“Seven Potions – Best Beard Oil & Leave-in Conditioner 1fl oz. Scented

Beard Softener. Stops Beard Itch. Natural, Organic”)18 is not particularly probative,

as such goods are different from the hair care products in issue, the mark does not

begin with the word POTION, as Opposer’s does, suggesting a progressive

numerical line of POTION hair care products, and it displays the number in word

form. This record does not reveal “extensive evidence of third-party use and

registrations” in connection with hair care products and in particular “Hair care

preparations; hair conditioner” “shampoo” or “Hair care preparations, namely,

conditioner and hair styling preparations.” Jack Wolfskin v. New Millennium, 116

USPQ2d at 1136 (Court noted fourteen examples of use and registration).

The probative evidentiary value of the third-party registrations alone is in

showing the sense in which the term POTION is used and understood. Id. at 1675;

Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) (third-

party registrations “may be given some weight to show the meaning of a mark in

the same way that dictionaries are used”). Such registrations are not evidence that

the marks therein are in use on a commercial scale or that the public has become

familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ 462, 463

(CCPA 1973); AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ

268, 269 (CCPA 1973). As discussed above, the term POTION has some

18 21 TTABVUE 64.

– 25 –
Opposition No. 91221520

suggestiveness evoking the meaning of a mixture in relation to hair care products.

The relevant third-party registrations serve to corroborate this.

As to the question of the effect of the third-party use examples on consumer

perception, the term POTION is somewhat weak and diluted for hair care products;

however, the evidence does not support the contention that the combination of the

word POTION followed by a number is weak as used with hair care products. In

addition, Opposer has shown its mark POTION 9 has achieved commercial

strength.

Recognizing the somewhat diluted nature of POTION in the hair care industry,

even if we were to consider it highly diluted, marks containing the word POTION

would still be barred where “the resemblance to [Opposer’s mark] is striking enough

to cause one seeing it to assume that there is some connection, association or

sponsorship between the two.” Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza

Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed.

Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).

Viewing the marks as a whole, we find the similarities “striking enough” such

that Applicant’s use of POTION 10 at the beginning of its mark falls within the

scope of protection of Opposer’s commercially strong mark.

Actual Confusion

Although the applications are based on intent to use, Applicant argues that “the

parties’ marks have been able to peacefully coexist for approximately 2 years

– 26 –
Opposition No. 91221520

without a single instance of actual confusion.” 28 TTABVUE 20. Applicant bases

this argument on Ms. Aronson’s following statement:

12. It’s a 10 has used both POTION 10 MIRACLE
REPAIR SHAMPOO and POTION 10 MIRACLE REPAIR
CONDITIONER in connection with its hair care line since
at least as early as June of 2015. The parties’ respective
products have been able to peacefully coexist during this
time. It’s a 10 has not heard of one instance where a
consumer believed It’s a 10 was in any way affiliated with
Wella or the POTION 9 mark.

16 TTABVUE 4.

“A showing of actual confusion would of course be highly probative, if not

conclusive, of a high likelihood of confusion. The opposite is not necessarily true,

however. The lack of evidence of actual confusion carries little weight.” Majestic,

65 USPQ2d at 1205, (citing J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960,

964, 144 USPQ 435, 438 (CCPA 1965)). See also Herbko Int’l, Inc. Kappa Books,

Inc., 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (showing of actual confusion not

necessary to establish a likelihood of confusion).

Ms. Aronson’s statement asserting use of the applied-for marks is not

corroborated by documentary evidence and is inconsistent with the Section 1(b)

filing basis. Other statements in the declaration, regarding marketing expenditures

and advertising, are not for the specific marks but rather for Applicant’s entire line

of It’s a 10 products. Moreover, the general statements of use do not include

examples of actual meaningful opportunities for confusion to occur (e.g., the

products were actually offered in the same store). The question of actual confusion

does not benefit from the presumption accorded to the identification of goods in

– 27 –
Opposition No. 91221520

determining the scope of the trade channels. Finally, two years does not constitute a

significant amount of time of overlapping use.

We find this factor to be neutral.

Balancing the Factors

We have considered all of the arguments and evidence of record, including those

not specifically discussed herein, and all relevant du Pont factors. The goods at

issue are identical or legally identical and it is presumed that they travel through

the same channels of trade to the same classes of customers. The type of goods are

general consumer items not subject to a heightened care in purchasing or requiring

a higher level of purchaser sophistication. The marks are partly similar in

appearance, sound, and connotation in that they both begin with POTION + a

number. This identical structure creates a similar overall commercial impression.

Although the term POTION is somewhat conceptually weak in the field of hair care

products, the structure of POTION plus a number at the beginning of a mark is not,

and Opposer’s mark has gained commercial strength, which entitles it to a scope of

protection sufficiently broad to encompass the level of similarity reflected in

Applicant’s marks.19

Decision: The opposition is sustained.

19 In view of our determination on the Section 2(d) claim, we do not reach the claim of
dilution under Section 43(c).

– 28 –