Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 AMERICAN HYGIENIC LABORATORIES, INC.
v.
TIFFANY & CO., ASSIGNEE OF AVON PRODUCTS, INC.
September 28, 1989
Hearing: June 7, 1989
Opposition No. 64,648 to application Serial No. 237,597, filed November 1, 1979
Berman, Aisenberg & Platt for American Hygienic Laboratories, Inc.
James B. Swire and Gary M. Gertzog Townley & Updike for Tiffany & Co.
Before Simms, Hanak and Quinn
Members
Member
American Hygienic Laboratories, Inc. (opposer), a Florida corporation, has opposed the application of Tiffany & Co., assignee of the mark and application of Avon Products, Inc., to register the mark TIFFANY for various cosmetics and toiletries. [FN1]
In the amended opposition opposer asserts that applicant's mark as applied to its goods so resembles the mark TIFFAN "E", previously used by opposer for moisturized skin cream, skin oil, deodorant, hand and body lotion, bath perfume, astringent cleaning lotion and bath pearls, as to be likely to cause confusion. More particularly, opposer asserts that it first used the mark TIFFAN "E" for moisturized skin cream in April 1969 and expanded the use of this mark to deodorant and skin oil in 1976. Opposer also asserts that applicant and its predecessor have had actual knowledge of opposer's use since at least August 20, 1979, the date of a protest letter sent to opposer by counsel for applicant's predecessor. Opposer further asserts that after opposer's response to that letter, wherein it was pointed out that opposer had used the mark since 1969, applicant's predecessor then began using and sought registration of the mark here opposed. As further grounds for opposition, opposer asserts that, on information and belief, neither applicant nor its predecessor made any use of the mark sought to be registered on any of the goods prior to the application filing date, so that this application is void ab initio; that applicant has made no use of the mark for more than two consecutive years so that the mark sought to be registered has been abandoned; and that allegations by applicant's predecessor in the application claiming use of the mark since October 18, 1979 were false and made with knowledge that they were false and constitute material misrepresentations knowingly made by applicant's predecessor to the Office which, but for those statements, would have resulted in a refusal to register. Accordingly, opposer alleges that applicant's predecessor and, therefore, applicant have committed fraud on the Office. [FN2]
In its amended answer, applicant denied the essential allegations of the amended opposition but admitted that its predecessor's claims of use of the mark on products other than filled powder compacts were made erroneously. More particularly, applicant asserted that the mark TIFFANY was first used on perfume on November 19, 1981 (after the filing date) and that the mark TIFFANY & CO. (rather than TIFFANY) was used at least as early as 1950 on pressed and loose face powder sold in compacts. In affirmative defenses applicant asserted that it began using the marks and names TIFFANY and TIFFANY & CO. over one hundred years ago and has long used the marks and names on a variety of luxury items including perfume flasks, lipstick cases, compacts, make-up brushes, mirrors, hair brushes, combs, file and comb sets, crystal, jewelry, watches, cutlery, chinaware, stationery and smokers' items. In this connection applicant listed ownership of thirty-one registrations covering these marks and pleaded that applicant is the prior user because opposer adopted its mark long after applicant's marks became well known to the trade and the public as well as to opposer. In other affirmative defenses, applicant stated that it has obtained injunctions against others from using the mark TIFFANY and other marks for perfume and that in adopting its mark, opposer is guilty of unclean hands and has acted in bad faith. It is applicant's position therefore that its rights to the mark TIFFANY for cosmetics and toiletries are superior to opposer's and that opposer's mark is likely to cause confusion with applicant's mark (applicant's Third Affirmative Defense).
*2 This case has a long and fairly complicated procedural history, including motions for summary judgment predicated upon the disposition of a civil action between the parties and upon alleged fraud committed by applicant's predecessor in the filing of this application. As a result of a motion for summary judgment brought by opposer on the ground of nonuse of the mark as of the filing date, the Board granted partial summary judgment, to which applicant had consented, except as to the use of the mark in connection with filled powder compacts. In other words, because there was no genuine dispute that applicant had not used the mark TIFFANY on goods other than filled powder compacts prior to the filing date, partial summary judgment with respect to all other goods in the application was entered. [FN3]
The record of this case consists of testimony (and exhibits) taken by both parties; portions of a discovery deposition of applicant's assistant manager of merchandise control (and exhibits); discovery responses relied upon by both parties pursuant to notices of reliance; copies of various printed publications such as pages from telephone directories, certain reference books and newspapers relied upon by applicant; certain official records such as copies of court decisions and Office proceedings relied upon by applicant; testimony in the form of an affidavit offered by applicant pursuant to a stipulation under Trademark Rule 2.123(b); and the application file. The parties have filed briefs on the issues in this case and were represented by counsel at an oral hearing of argument.
The issues framed by the pleadings are (1) whether applicant's mark TIFFANY for various cosmetics and toiletries so resembles the allegedly previously used mark TIFFAN "E" for various skin care products as to be likely to cause confusion; (2) whether applicant made any use of the mark TIFFANY in connection with the only remaining item in the application (filled powder compacts) as of the filing date of the application; (3) if so, whether applicant has abandoned such mark as a result of nonuse for at least two consecutive years; and (4) whether applicant has committed fraud in the filing of its application by making allegations concerning use of the mark TIFFANY when it assertedly knew that those allegations were false.
Located in Miami Beach, Florida, opposer is a family-owned corporation founded in 1948 by Ben Grenald, a registered pharmacist. Mr. Grenald, opposer's president, testified that he created a skin cream moisturizer and named it TIFFAN "E" in honor of the birth of his granddaughter, Tiffany Stettson, who was born in April 1969. Opposer's cream, containing collagens and vitamin E, was named TIFFAN "E". In the same year, opposer also produced and marketed TIFFAN "E" perfume bath oil and astringent skin cleansing lotion. Over the years, other cosmetic products were developed and sold. In 1976, opposer began using the mark on vitamin E skin oil and in 1977 on antiperspirant deodorant. In 1981, opposer began using the mark on hand and body lotion. Recently opposer began using the mark on shampoo, hair rinse and on perfume (1987). [FN4] Opposer's products are sold in department stores, mass merchandisers, drug and grocery stores, beauty shops, military post exchanges, hotel shops, at airports and by mail order. Opposer's goods have been advertised in newspapers, magazines, on television and radio, and by flyers and direct mail. Since 1969, total wholesale sales revenues for opposer's TIFFAN "E" products have amounted to $1.3 million. Opposer has spent over $300,000 in advertising over the years.
*3 According to opposer's testimony, opposer's president was aware of the "jewelry company" Tiffany & Co. in 1969 when he adopted and first used the mark TIFFAN "E" (Grenald dep., 58).
Opposer's record also consists of numerous discovery responses of applicant. Applicant has admitted that it was aware of opposer's use of the TIFFAN "E" mark as early as 1979. In August 1979, before applicant's alleged first use on cosmetics and toiletries, applicant's predecessor, Avon Products, sent a cease and desist letter to opposer objecting to its use of the mark TIFFAN "E". In response, opposer's attorney stated that opposer had been using this mark since 1969. Shortly thereafter applicant filed the instant application. As noted above, applicant's responses demonstrate that it never sold or offered for sale under the single-word mark TIFFANY any of the goods listed in the application prior to the filing date (November 1, 1979). Applicant states in these responses, however, that it used the mark "TIFFANY" in the form TIFFANY & CO. on one of the items in the application--filled powder compacts--since the 1950s. [FN5] Applicant has admitted, therefore, that the dates of use listed in the application are erroneous.
Applicant Tiffany & Co. is the world-renowned jewelry retailer established in 1837 and headquartered in New York City with stores in Boston, Atlanta, Chicago, Houston, Dallas, San Francisco and Beverly Hills. Selling at retail, through catalog ("Blue Book") sales and through its corporate division, applicant sells a wide variety of merchandise under its marks including watches, clocks, jewelry, precious stones, cutlery, crystal, glassware, lamps, candlesticks, candelabra, chinaware, earthenware, porcelain, purses, luggage, cigarette lighters and cases, pens, greeting cards and decorative art objects. Applicant has made of record its registrations of the marks TIFFANY and TIFFANY & CO. covering these goods and others. Prior to opposer's first use of its mark, applicant also sold such items as scarves, personal care grooming accessories such as lipstick cases, filled compacts, perfume bottles, combs, hair brushes, nail files, powder boxes and pill boxes.
Applicant's record includes copies of advertisements of some of its jewelry products, grooming or toiletry accessories including compacts, appearing in newspapers and magazines. According to applicant's testimony, applicant has received numerous awards over the years and some of its merchandise has been displayed in museums such as the Metropolitan Museum of Art in New York City. Applicant's business was also featured in the 1950 book "Breakfast at Tiffany's" by Truman Capote, later made into a renowned movie.
At the time of the filing of the instant application, Tiffany & Co. had been acquired by Avon Products and was operated as a wholly owned subsidiary. The application seeks registration of the mark for twenty different cosmetic products. See Footnote (1).
Applicant's record also includes the testimony of an expert witness who has for many years held numerous management positions in the cosmetics industry. This witness, Mr. Stanley Kohlenberg, now a distributor of cosmetics and fragrances, testified that fashion designers in this country have given their names to various fragrances, toiletries and cosmetic products since 1968. Also, cosmetics companies have made arrangements with various jewelry houses to design such products as lipstick cases and powder compacts for special occasions such as Christmas. Finally, Mr. Kohlenberg testified that items such as lipstick and powder cases are frequently sold in cosmetics departments and bought from the manufacturer by the same store cosmetic or fragrance buyer.
*4 As mentioned above, these parties were involved in federal civil litigation commenced by applicant in 1982, three years after this opposition proceeding began. In that action lodged in the United States District Court for the Southern District of New York, applicant sought a declaratory judgment that its use of the mark TIFFANY did not interfere with or infringe opposer's use of the mark TIFFAN "E" but, in the alternative, applicant alleged that opposer's mark infringed upon its previously used trademark, service mark and trade name and sought an injunction prohibiting opposer's continued use of the mark TIFFAN "E". At opposer's request, the case was transferred to the Southern District of Florida in 1983 (Tiffany & Co. v. American Hygienic Laboratories, Inc., 222 USPQ 548 (SDNY 1983)). In 1985, the case was dismissed with prejudice.
It is clear that opposer's skin care and other products are closely related if not identical to some of the products listed in applicant's application. [FN6] Also, because there is no restriction in the application with respect to channels of trade, we must presume that applicant's goods are sold in all channels of trade normal for those products, including the channels of trade (drug stores, beauty salons, etc.) in which opposer sells its products.
Moreover, because the skin care products and cosmetics of the respective parties are relatively inexpensive items, we may assume that less care may be used in the purchasing decision than if these products were expensive items infrequently purchased.
While there are obvious differences between opposer's mark TIFFAN "E" and applicant's mark TIFFANY, we believe that the similarities in appearance, sound and commercial impression outweigh those differences. In this determination we have considered the renown of applicant's TIFFANY mark, which renown is amply demonstrated by this record. These facts persuade us that potential purchasers of opposer's skin care products are likely to believe that, in view of the similarity of the marks, opposer's goods emanate from or are otherwise sponsored by applicant. [FN7] Accordingly, we hold that the marks of the parties as applied to the respective skin care and cosmetics products are so similar as to be likely to cause confusion. [FN8]
Priority
In order for opposer to prevail under Section 2(d) of the Act, of course, it must establish prior rights. This record establishes opposer's use of its mark long prior to any use by applicant of the mark TIFFANY on any of the items set forth in its application. Indeed, as indicated below, we find that applicant made no use of this mark on any of the goods at the time the application was filed and only commenced use on some of the goods, such as perfume, in late 1981 (after the filing date).
While we find that opposer has demonstrated by the preponderance of the evidence that it commenced use of its mark on skin cream in 1969, even applicant repeatedly concedes that opposer commenced use as early as 1973 or 1974, long before the October 18, 1979 date asserted in applicant's application. (Applicant's brief, 2, 9, 18, 19, 28, 30 and 50). Nevertheless, it is applicant's position that it has superior rights because "the fame of its mark was such that its logical zone of expansion included cosmetic items well before 1969 or 1974" (applicant's brief, 30), and that applicant has sold filled powder compacts under the mark TIFFANY and its "equivalent" TIFFANY & CO. since at least 1959. For the reasons indicated below, applicant's arguments must be rejected.
*5 While applicant has rights in the mark TIFFANY for a wide variety of items such as jewelry, silver, china, etc., the question in this proceeding is which party has prior rights as a result of use of the mark in connection with cosmetics and toiletry products. That is to say, while there is no doubt that applicant has priority of use of its marks on a wide array of products (jewelry, crystal, china, etc.), we do not believe that this use may be relied on to establish priority with respect to the specific cosmetic and toiletry products in its application. Cf. United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 305-306 (TTAB 1977) and Dap, Inc. v. Flex-O-Glass, Inc., 191 USPQ 266, 270 (TTAB 1976). There can be no question but that opposer has used its mark for similar goods prior to applicant. With respect to applicant's reliance upon the testimony and discovery responses (unsupported by documents) that it used the mark TIFFANY & CO. on filled powder compacts prior to the filing date of the application, that mark is not the mark which applicant is here seeking to register. [FN9] Concerning applicant's argument of priority and its request that the dates of use recited in its application be amended to at least 1959 based on the evidence of record with respect to use of the mark TIFFANY on filled powder compacts, a heavier burden has been imposed upon an applicant seeking to establish an earlier date of use because a change of position from one at the time of filing of the application requires greater substantiation. Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773-74 (Fed.Cir.1987). When a party seeks to carry the date of first use back to a date prior to that stated in the application, the proof of an earlier date must be by clear and convincing evidence. Hydro-Dynamics Inc., supra.
Applicant relies primarily upon the testimony of Ms. Carol Wright, its assistant manager of merchandise control since 1984, to support trademark use of TIFFANY on filled powder compacts. Ms. Wright acknowledged that since 1984 she had not inspected any of applicant's compacts and that she was therefore not familiar with them any longer. Moreover, her testimony recalling events more than nine years before was not corroborated by any documents showing use of the mark TIFFANY in connection with filled powder compacts, let alone any exhibits pre-dating the filing date. Suffice it to say that applicant's record falls short of convincing us by clear and convincing evidence that applicant used the mark TIFFANY on filled powder compacts prior to the filing date of this application. Accordingly, we conclude that opposer has demonstrated priority in this case. [FN10]
Nonuse of TIFFANY Prior to Filing Date
Because applicant has made no use of the mark TIFFANY on any of the goods set forth in its application, including filled powder compacts, prior to the filing date of its application, the application is void ab initio. Pan American Life Insurance Co. v. Federated Mutual Insurance Co., 226 USPQ 914, 918 (TTAB 1985) and cases cited therein.
Abandonment
*6 In view of our conclusion that applicant never used the mark TIFFANY on any of its goods prior to the filing date, we need not consider opposer's charge of abandonment. Nevertheless, we note that applicant has admitted that, with the exception of perfume assertedly sold since late 1981 under the mark TIFFANY, and filled powder compacts, it has not used the mark on any of the products set forth in its application since January 1980. [FN11]
Fraud
On this claim it is opposer's position that the false statements of use of the mark TIFFANY made in this application with regard to the twenty different products listed therein were material since the application would not have been allowed by this Office but for those false claims. Opposer points to the fact that both the corporate officer of applicant's predecessor and its legal representatives, who received the bogus shipments, were directly involved in the alleged deceit practiced upon this Office. Opposer argues that while Avon Products committed the initial fraud upon the Office, the successor company Tiffany continued the deceit during the next five years by serving evasive discovery responses, delaying the disclosure of relevant facts by the filing of the civil action against opposer and engaging in other efforts to hide the facts from opposer and the Board. Opposer maintains that Tiffany bears the same liability as its predecessor and former parent company, in whose shoes it now stands. Applicant, on the other hand, argues that it has acknowledged that its predecessor's claim of valid first use was erroneous, that any insufficiency of valid use was the result of an honest mistake, misunderstanding, or misapprehension of rights regarding the establishment of token use to support the filing of this application, that applicant's predecessor did use the mark on the goods but that the shipments were not sufficient to satisfy the legal requirements for bona fide commercial use, that opposer has failed to offer testimony from those involved in the filing of this application, and that fraud has not been "proved to the hilt," as it must be, with little or no room for speculation, inference or surmise. Applicant also points out:
Applicant formally gave notice to Opposer's counsel of such deficiencies on February 28, 1986 (Answer to Amended Notice of Opposition) and Applicant itself successfully cross-moved for summary judgment refusing registration to all goods herein except powder-filled compacts so no registration can issue based on the deficient first use. (Applicant's brief, 1).
After careful consideration of this record and the arguments of the parties, and resolving all doubt on this issue against the charging party (Yocum v. Covington, 216 USPQ 210, 216 (TTAB 1982)), we hold that opposer has not made out a case of fraud. As applicant's counsel has pointed out, applicant has acknowledged that its shipments were sham transactions insufficient to establish the use necessary to support this application. While one can doubt whether applicant's predecessor misperceived the law, as applicant argues, we cannot say that this record supports the inferences of the fraudulent intent on the part of Avon's employees that opposer wishes us to draw.
*7 We have also examined applicant's unclean hands defense based upon applicant's contention that opposer's president, Mr. Grenald, committed perjury during his testimony. We find no basis for this claim because, among other reasons, Mr. Ron Olman, a commercial photographer used by opposer, had not told Mr. Grenald that an invoice (Exhibit 2), "reconstructed" by Mr. Olman in the early 1980s from negatives and notes which are no longer available and about which Mr. Grenald had testified, was not an original (Olman dep., 10-11). Moreover, the early and mistaken use of TIFFANY (rather that TIFFAN "E") on opposer's labels by one of opposer's contract manufacturers is adequately explained in the record. In any event, we believe that opposer's record adequately establishes its prior use for cosmetics and toiletries. Applicant's other affirmative defenses are without merit and opposer's renewed arguments in its brief concerning the effect of the dismissal with prejudice of the civil action have already been disposed of. See Board order of January 27, 1986.
Decision: Based upon our findings on the issues of priority, likelihood of confusion and nonuse of the mark at the time of the filing of the application, the opposition is sustained and registration to applicant is refused.
R.L. Simms
E.W. Hanak
T.J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Serial No. 237,597, filed November 1, 1979, claiming use since October 18, 1979. The full description is:
cosmetics and toiletries, namely, cologne, dusting powder, filled powder compacts, nail enamel, after shave lotion, moisturized skin lotion, lipstick, moisturized skin cream, bubble bath, perfumed talc, facial mask, mouthwash, foam shave cream, perfume, hair conditioner, bath oil, hand lotion, toilet soap and hair shampoo.
FN2. On motion, the Board struck a part of the amended opposition wherein it was alleged that applicant's mark falsely suggests a connection with opposer. See American Hygienic Laboratories, Inc. v. Tiffany & Co., 228 USPQ 855 (TTAB 1986).
FN3. Before this application was filed, Tiffany & Co. had been acquired by Avon and was operated as a wholly owned subsidiary. (In October 1984 Tiffany & Co. was sold to an investment group and again became an independent entity.) The record on summary judgment demonstrated that the shipments of cosmetics made to provide a basis for this application were from Avon's vice president to himself and to two in-house counsel. More particularly, on October 18, 1979 sample products bearing the mark were shipped without payment from one corporate officer of Avon Products to the attorneys for that company. That was a sham transaction. See NutraSweet Co. v. K & S Foods, Inc., 4 USPQ2d 1964 (TTAB 1987), Columbia Pictures Industries, Inc. v. Miller, 211 USPQ 816, 819 (TTAB 1981), Times Mirror Magazines, Inc. v. Sutcliffe, 205 USPQ 656, 662 (TTAB 1979) and Proctor & Gamble Company v. Jacqueline Cochran, Inc., 102 USPQ 449 (Comr.1954). Moreover, there is no evidence that these one-time shipments were followed by other shipments or accompanied by other activities indicating a continuing effort to use the mark and place the products on the market. Richardson-Vicks Inc. v. Franklin Mint Corporation, 216 USPQ 989, 991 (TTAB 1982). Applicant's sale of filled powder compacts is discussed below.
FNDespite entry of partial summary judgment in opposer's behalf, the Board noted that the question of fraud involved a genuine issue for trial. The Board also stated, for purposes of determining the remaining issues (such as likelihood of confusion), all of the goods recited in the application would be considered. See Board's decision of July 16, 1987.
FN4. Opposer has also sold bath capsules or bath pearls under the mark on a limited basis. This product is apparently no longer manufactured but is still offered for sale in opposer's Miami Beach pharmacy. Also, opposer's astringent cleansing lotion is no longer sold.
FN5. Applicant also states that it first sold perfume bearing the mark TIFFANY on November 19, 1981, after the filing date of the application.
FN6. In the Board's decision granting partial summary judgment in opposer's favor, the Board noted:
The case will go forward on the remaining issues in the opposition (including the issue of whether the mark sought to be registered was used on filled powder compacts prior to the filing date) and for purposes of determining such issues all goods recited in the involved application as published will be considered.
FN7. At the oral hearing, applicant's attorney argued that "reverse confusion" was not a pleaded issue in this case and that he was not on notice that opposer was making this allegation. Aside from the fact that "reverse confusion" does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion, opposer has clearly pleaded this theory of its case in the amended opposition (par. 7).
FN8. We also note that in its Third Affirmative Defense herein and in the civil litigation between the parties applicant has taken the position that opposer's trademark is confusingly similar to its own marks and trade name.
FNIt should be noted that our decision on the issue of likelihood of confusion is circumscribed by such considerations as the identity or close similarity of the goods sold by opposer and identified by applicant in the application. A different outcome could result if there were restrictions in the channels of trade and class of purchasers, or other differences were present.
FN9. Applicant's contention that TIFFANY & CO. is equivalent to the mark TIFFANY is belied by its repeated conduct in obtaining registrations of both marks for many of the same goods. See also Board order of June 19, 1986. After applicant discovered Ms. Carol Wright late in this proceeding, discussed infra, applicant changed its position to an argument that it used the mark TIFFANY per se on filled powder compacts prior to the filing date.
FN10. Even if we were to find Ms. Wright's testimony clear and convincing evidence on this point, there is a substantial question as to whether use of the mark TIFFANY (or TIFFANY & CO. for that matter) was "lawful" because the compacts were apparently sold without any label setting forth the ingredients or contents and other information such as the manufacturer and place of business required by the Food, Drug and Cosmetic Act and FDA regulations. (Avon's labels accompanying the application were never used by Tiffany, according to Ms. Wright.) See The Clorox Co. v. Armorur-Dial, Inc., 214 USPQ 851 (TTAB 1982), Satinine Societa v. P.A.B. Produits et Appareils de Beaute, 209 USPQ 958 (TTAB 1981) and In re Pepcom Industries, Inc., 192 USPQ 400 (TTAB 1976).
FN11. Even with regard to perfume, however, the testimony is contradictory. Applicant's third-party witness, Stanley Kohlenberg, testified that applicant commenced used of the mark in 1987. If that is the case, recent use of a mark does not cure abandonment. AmBRIT, Inc. v. Kraft Inc., 812 F.2d 1531, 1 USPQ2d 1161, 1177-78 (11th Cir.1986).