Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 S & L ACQUISITION COMPANY AND SELIGMAN & LATZ, INC., JOINED AS PLAINTIFF
v.
HELENE ARPELS, INC.
Opposition No. 71,201
December 2, 1988
By the Board:
J.E. Rice, R.L. Simms and R.F. Cissel
Members
An application has been filed by Helene Arpels, Inc. to register the mark "HELENE ARPELS" for perfume. [FN1]
Registration has been opposed by S & L Acquisition Company, as assignee of Seligman & Latz Inc., [FN2] on the grounds, in essence, that applicant's mark "HELENE ARPELS" so closely resembles opposer's previously used and registered mark "ADRIEN ARPEL" for cosmetics, facials and beauty care services that, when applicant's mark is applied to perfumes, there exists a likelihood of confusion as to source.
Applicant, on December 18, 1985, filed its answer to the opposition, together with a counterclaim to cancel two of opposer's pleaded registrations, that is Registration No. 1,148,153 for the mark "ADRIEN ARPEL" for "beauty care services", and Registration No. 1,179,699 for the mark "ADRIEN ARPEL" for "cosmetics". The counterclaims are grounded on the claims of likelihood of confusion and priority.
Applicant, in its answer, admitted that it first used the involved mark "HELENE ARPELS" in connection with the goods recited in the application to register, that is, perfume, well subsequent to the filing date of any of opposer's pleaded registrations. Nevertheless, applicant contends, in its counterclaim, that it is entitled to priority because since January 1, 1960, and well prior to any date of first use alleged by opposer, applicant has been engaged in the sale of women's shoes, belts, clothing, accessories, handbags and the rendering of retail store services in the field of clothing under the mark "HELENE ARPELS"; and that applicant's use of that mark on perfumes constitutes a "natural expansion" of applicant's prior rights in the trade. [FN3]
This case now comes up on the following matters:
(1) Opposer's motion for summary judgment on applicant's counterclaim to cancel Registration No. 1,148,153 for "beauty care services" on the grounds that applicant's claim of "natural expansion" is completely without merit and that there exists no likelihood of confusion between the marks "HELENE ARPELS" and "ADRIEN ARPEL" as applied to applicant's shoes, belts, clothing, accessories, handbags, and retail store services on the one hand and opposer's "beauty care services" on the other.
(2) Opposer's motion for summary judgment on applicant's counterclaim to cancel Registration No. 1,179,699 for "cosmetics" on the grounds, in essence, that opposer's ownership of a third and pre-existing registration for the mark "ADRIEN ARPEL" for a wide variety of cosmetics precludes the cause of action set forth in that counterclaim.
(3) Applicant's motion for leave to amend its answer to assert additional grounds for cancellation of Registration Nos. 1,148,153 and 1,179,699 and a counterclaim for cancellation of opposer's third and pre-existing registration, that is, Registration No. 893,847.
*2 The motions have been fully briefed. [FN4] Because applicant's motion for leave to amend its answer is potentially dispositive of certain matters raised in opposer's motion for summary judgment, applicant's motion for leave to amend its answer shall be considered first.
We turn, accordingly, to applicant's motion for leave to amend its answer. By this motion, applicant seeks to state, as additional grounds for cancellation of Registration Nos. 1,148,153 and 1,179,699 and as the sole ground for cancellation of opposer's as yet unchallenged registration, that is, Registration No. 893,847, that opposer's mark falsely suggests a connection with applicant. The counterclaims in question read as follows: [FN5]
7. The mark HELENE ARPELS consists of the personal name of applicant's founder and president. Applicant's mark HELENE ARPELS INC. contains the personal name of applicant's president, Helene Arpels, as its dominant feature. On information and belief, those who encounter applicant's perfume bearing the mark HELENE ARPELS will associate such product with applicant's founder and president, Mrs. Helene Arpels, with applicant's HELENE ARPELS and HELENE ARPELS INC. line of products and Applicant's HELENE ARPELS INC. retail store.
9. On information and belief, applicant's founder and president, Mrs. Helene Arpels, has created a public persona in the applicant HELENE ARPELS INC. in the 26 years applicant's retail store services have been offered to the public. Mrs. Helene Arpels herself has enjoyed a public persona in connection with retail store services and the goods sold under the "HELENE ARPELS" and "HELENE ARPELS INC." labels. Mrs. Helene Arpels was married to Louis Arpels, founder of Van Cleef and Arpels, and she has been photographed with Mrs. Joseph (Rose) Kennedy when Mrs. Kennedy visited the HELENE ARPELS retail store. The clientele of HELENE ARPELS INC. have been reported to include Mrs. Frederick Cushing and Mrs. Steven Smith, the former Jean Kennedy.
10. On information and belief, through long and continuous use and publicity, the marks, name and identity HELENE ARPELS INC. and HELENE ARPELS have gained recognition and reputation, and are associated with the individual person, Mrs. Helene Arpels, who stands behind and lends her name and reputation to applicant's corporate person.
11. Applicant is not in any way connected with the activities performed by opposer under its ADRIEN ARPEL mark.
14. If opposer's mark "ADRIEN ARPEL" is deemed the same as or a close approximation of applicant's name and identity "HELENE ARPELS" as used in connection with the parties' respective businesses, goods and services, then it is alleged that opposer's use of ADRIEN ARPEL creates a false suggestion of a connection or false association with applicant and/or its founder and president, Mrs. Helene Arpels, which would thereby cause applicant injury within the meaning of Section 2(a) of the Trademark Act. As such, opposer's Registration Nos. 893,847; 1,148,153 and 1,179,699 should be cancelled.
*3 Applicant, in support of its motion, argues that leave to amend pleadings shall be freely given when justice so requires; that, in this case, justice requires that leave be given because the law on Section 2(a) was developing at the time of answer and has since been clarified. Applicant also argues that opposer cannot be prejudiced by allowance of the amendment since proceedings remain at a fairly early stage and since the original answer included general allegations, see ¶ 7, supra, of applicant's answer, apprising opposer that the fame of applicant's name and the association of that name with applicant's founder and corporate president would be issues in this proceeding.
Opposer has filed a brief in opposition to applicant's motion. Opposer, in its brief, concedes that the law respecting the elements of a 2(a) claim has been fairly substantially revised. Nevertheless, opposer argues that the revised elements of a claim of a false suggestion of a connection were clearly articulated at least 1 year and 10 months prior to the filing of the original answer; that applicant has conceded that facts supporting its claim were clearly available at the time of answer; and that since applicant did not plead its Section 2(a) claim with its original answer, applicant is estopped to interpose such counterclaims at the present time.
Trademark Rule 2.106(b)(2)(i) provides, in relevant part:
A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer.
In this case, the Board is not persuaded that the grounds for applicant's 2(a) counterclaim were not available to applicant at the time of answer. In this regard, the Board notes that the revised elements of a Section 2(a) claim of a false suggestion were first articulated by the Board in Canovas v. Venezia 80 S.R.L., 220 USPQ 660, in 1983 and had been repeated in at least 4 cases reported prior to the filing of applicant's answer. Moreover, although Consolidated National Gas Company v. CNG Fuel Systems, Limited, 228 USPQ 752 (TTAB 1985) was the first case to expressly state that intent was no longer an element of a 2(a) claim of false suggestion--as applicant argues--this statement did not represent a change or modification of any law existing at the time of applicant's answer. As the Board had stated in American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984):
Petitioner asserts that the "falsely suggests" language of Section 2(a) is equivalent in effect to the "likely to cause confusion language of Section 2(d) * * * and that the Section 2(a) standard is met by showing likelihood of confusion, as in a Section 2(d) claim plus an intent, actual or implied, to trade on the goodwill and reputation of petitioner. However, in light of the opinion of the Court of Appeals for the Federal Circuit in the case of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc. (citations omitted), the Board has recently reviewed its practice concerning what constitutes a proper Section 2(a) claim of false suggestion. See, Springs Industries v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ 512 (TTAB 1987). As discussed by the Board in the Springs Industries case, * * * the elements of [a claim of a right of privacy and publicity] are distinctly different from the elements of [a claim] of trademark or trade name infringement. In view thereof, the Board has held that where, as here, a petitioner bases its ground for cancellation on that portion of Section 2(a) that prohibits registration of a mark that falsely suggests a connection with persons, living or dead, or institutions, petitioner must show that the registered mark is the same or a close proximation of petitioner's previously used corporate name, i.e., petitioner's corporated identity that the mark would be recognized as such, that petitioner is not connected with the activities performed by respondent under the mark, and that petitioner's name or identity is of sufficient fame or reputation that, when respondent's mark is used on its goods, a connection with petitioner would be presumed.
*4 In view thereof, and since the Board is not persuaded that the grounds for pleading a 2(a) counterclaim were not available to applicant at the time it filed its answer, applicant's motion for leave to amend its answer is denied. [FN6]
We turn now to opposer's motion for summary judgment. As previously indicated, it is opposer's position that its prior subsisting registration, that is, Registration No. 893,847, for the mark "ADRIEN ARPEL" (stylized form) for a variety of cosmetics, encompasses substantially the same mark and substantially the same goods as those set forth in the registration under challenge, that is Registration No. 1,179,699 for the mark "ADRIEN ARPEL" (block form) for "cosmetics" per se; and that therefore applicant cannot suffer any added damage by reason of the continued existence of the latter registration. With respect to applicant's counterclaim to cancel Registration No. 1,148,153, opposer argues that the services identified in that registration, that is, beauty care services, [FN7] are so unrelated to applicant's retail store services in the field of clothing, shoes, and accessories that, as a matter of law, there can be no likelihood of confusion as to source. [FN8]
As the parties to this proceeding have recognized, summary judgment is a pretrial device to dispose of cases where there exists no genuine issue of material fact and where the moving party is entitled to judgment as a matter of law. It is settled that the function of this procedure is to avoid a useless trial. The burden rests on the moving party to demonstrate the absence of any genuine issues of material fact and all doubts are resolved against the moving party.
Turning first to the second ground for opposer's motion for summary judgment, that is that the services identified in Registration No. 1,148,153 and inter alia, applicant's, retail store services in the field of clothing, shoes and accessories are so completely unrelated that there exists no likelihood of confusion as to source, the Board notes that opposer's arguments are wholly unsupported and that on this basis alone, opposer's motion is not well-taken. Although opposer makes much of the fact that applicant relies on merely conclusory allegations in opposition to the motion, opposer fails to recognizes its own duty to submit a motion for summary judgment that has been properly supported. In any event, we do not believe that, on the basis of the pleadings alone, it can be determined that there are no genuine issues of material fact and that opposer is entitled to judgment as a matter of law. [FN9]
We turn now to opposer's motion for summary judgment on the basis of its prior incontestable registration. The Board notes that this registration purportedly encompasses the following mark, for the following list of goods:
pads impregnated with make-up remover, skin freshener, astringent, moisturizer, under eye lightener, cover base, liquid powder; make-up base, namely, cream, liquid and powder cosmetic foundation base; blush, eye-shadow, matte cake liner for the eyes, eyeliner seal, mascara, kit containing eyebrow brush and eyebrow cake, eyebrow seal, face powder, lipliner pencil, lipstick; kit containing brush and various lip colorings, lip moisturizer, face cream, masque, skin cream, eyelid oil, liquid lash cleaner, and body lotion in Class 51 and skin cleanser for removing dirt in Class 52.
*5 As indicated earlier, it is opposer's position that this registration and Registration No. 1,179,699 for the mark "ADRIEN ARPEL" for "cosmetics", per se, are, for all intents and purposes, substantially identical and that therefore applicant cannot suffer any added damage by reason of the continued existence of the latter registration.
The doctrine upon which opposer relies was first clearly articulated by the Court of Appeals for the Federal Circuit (then the Court of Customs and Patent Appeals) in Morehouse Manufacturing Corp. v. J. Strickland and Company, 407 F.2d 881, 160 USPQ 715 (CCPA 1969). There the court held that ownership of a subsisting registration is a proper defense to a cancellation proceeding when the registration is for the same or substantially identical mark and for the same or substantially identical goods and/or services. This doctrine has been followed in a number of cases including, Joseph & Feiss Co. v. Sportempos Inc., 451 F.2d 1402, 172 USPQ 235 (CCPA 1971) where, although the recitation of goods in the prior subsisting registration and the statement of goods in the subsequent application were distinguishable, the court found that the goods actually represented by those descriptions were "substantially the same or so related as to represent in law a distinction without difference". Id. at 236.
Applicant argues that it can suffer damage over and above any damage that it may at one time have asserted against opposer's now incontestable registration since: (1) the term "cosmetics" is, by definition, broader than the 25 different types of cosmetics represented by opposer's prior and subsisting registration; and (2) the mark "ADRIEN ARPEL"--in block form--is not legally identical to the mark ADRIEN ARPEL--in stylized form--represented in opposer's prior and subsisting registration. Applicant also argues that it can suffer added damage by reason of the fact that opposer's prior registration is now incontestable and that applicant should be allowed to contain opposer's incontestable rights strictly to those goods identified in the prior registration.
We find little merit in applicant's argument. Insofar as the marks are concerned, the question in a situation such as this is whether the registered marks are, in fact, substantially the same marks so that they project the same image and symbolize a single and continuing commercial impression. See Humble Oil & Refining Company v. Seksui Chemical Company Ltd. of Japan, 165 USPQ 597 (TTAB 1970). In this case, there can be no doubt that "ADRIEN ARPEL" whether represented in block form or stylized lettering is the single dominant commercial impression of both marks engendering the same and continuing commercial impression.
Insofar as the goods are concerned, the question in a situation such as this is not simply whether the second registration covers goods not encompassed by the former registration, but additionally, whether the second registration constitutes an expansion of opposer's rights in the mark such that any estoppel that may have been worked by reason of applicant's failure to challenge the prior registration at an earlier time should not equitably extend to the goods for which opposer now seeks to gain or maintain federal registration. Where, as here, the goods represented by the prior registration and those represented by the challenged registration are, in part, identical and otherwise "substantially the same or so related as to represent in law a distinction without difference", it is entirely proper to conclude that applicant is estopped to challenge the validity of the second registration since applicant could not possibly suffer any added damage by reason of its continued existence. See, Joseph & Feiss Co. v. Sportempos Inc., supra. We note, in this regard, that the Random House College Dictionary defines "cosmetics" as a powder, lotion, or other preparation for beautifying the complexion, skin, hair, nails etc. and that the goods in opposer's later registration are no closer to applicant's goods than are the goods in opposer's earlier registration.
*6 In view thereof, opposer's motion for summary judgment on applicant's counterclaim to cancel Registration No. 1,179,699 is well-taken. Nevertheless, since opposer has failed to submit a status and title copy of Registration No. 893,847, there exist genuine issues of fact as to the validity and ownership thereof. Accordingly, opposer is allowed until January 13, 1988 to submit a status and title copy of Registration No. 893,847, failing which opposer' motion for summary judgment shall be denied.
Proceedings herein are otherwise suspended. The parties shall be advised when proceedings are resumed, at which time opposer shall be allowed additional time to file its answer to applicant's counterclaim for cancellation of Registration No. 1,148,153. [FN10]
J. E. Rice
R. L. Simms
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 431,331, filed June 21, 1983, alleging dates of first use of June 10, 1983.
FN2. The assignment of the pleaded registrations has been recorded at Reel 513, Frame 005. In view thereof, S & L Acquisition Company is hereby joined as party plaintiff.
FN3. Applicant, in its counterclaim, also pleads ownership of Registration No. 1,374,822 for the mark "HELENE ARPELS INC." for "women's shoes and belts made of leather and suede" and for "retail store services in the field of clothing, shoes and accessories". However, this registration issued subsequently to the date of any of opposer's pleaded registrations.
FN4. Applicant's motion, in essence, to strike opposer's reply brief in further support of its motion for summary judgment is noted. Since we agree with applicant that opposer's reply brief constitutes a mere reargument of the matters in question, opposer's reply brief has been given no consideration in our disposition of the motion in question.
FN5. Paragraph 7, supra, of the counterclaim was also included in the original answer.
FN6. Although we do not reach the merits of applicant's counterclaim on this motion, it should be noted, in any event, that the ability of applicant ultimately to have proved that "HELENE ARPELS" and "ADRIEN ARPEL" are alternative designations for the same persona is highly questionable. To prevail on a Section 2(a) counterclaim of a false suggestion of a connection, a party must prove a unique and unmistakable reference to itself as a persona, and not merely the use of confusingly similar names. See, University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed.Cir.1983) and McDonnel Douglas v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985).
FN7. For ease of expression, this decision refers to the services identified in Registration No. 1,148,153 as beauty care services. However, it has been noted that the recitation of services in that registration actually reads as follows, "beauty care services--namely diagnosing and advising with regard to cosmetic use and hair styling, applying cosmetics, styling hair and brows, and performing facials".
FN8. Under the doctrine of natural expansion, a senior user is entitled to protection not only as against subsequent uses of the same or similar mark for the same or similar goods or services, but also as against subsequent uses of the same or similar mark for any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark. This is so whether or not the senior user actually has expanded its use of its mark, after the commencement of the subsequent user's use, to goods or services which are the same as or closely related to those of the subsequent user. See, Mason Engineering and Design Corporation v. Mateson Chemical Corporation, 225 USPQ 956, 962 (TTAB 1985). It is opposer's position, in effect, that because there exists no likelihood of confusion between applicant's use of the mark "HELENE ARPELS" in connection with its first line of goods and services and opposer's use of the mark "ADRIEN ARPEL" in connection with beauty care services that applicant's claim of natural expansion is completely without merit and that opposer is entitled to a dismissal of applicant's counterclaim with prejudice.
FN9. Where a party moves for summary judgment without supporting evidence, it is settled that such a motion is the functional equivalent of a motion for judgment on the pleadings. See, 6 Moore's Federal Practice ¶ 56.09 at 56-167 (1985).
FN10. The stipulated protective order filed by the parties is approved and entered. Counsel should note, however, that for the protection of both parties, the parties, as well as their counsel, should sign the stipulated protective order so as to create a contract that will survive this proceeding.
Erma S. Brown
Administrator, Trademark Trial and Appeal Board
*7 The Office action dated December 2, 1987 is amended as follows:
Page 13, line 2 the words "ADRIEN ARPEL" (stylized form) should be inserted after the comma between the words "mark and for"; line 3, the words "make up" should be "make-up"; line 15, the words "eye lid" should be "eyelid"; line 22 the word "later" should be "latter"; line 27 substitute "J. Strickland and Company" for J. Strickland Co.".