Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FRED HAYMAN BEVERLY HILLS, INC.
JACQUES BERNIER, INC. D.B.A. PARFUMS GIANELLI
[No Docket number on Document]
March 29, 1996
Hearing: June 28, 1995
Opposition No. 84,521 to application Serial No. 73/503, 188 filed on October 10, 1984
Dennis G. Martin of Blakely, Sokoloff, Taylor & Zafman and Patrick Jay Hines of Oblon, Spivak, McClelland, Maier 7 Neustadt, P.C. for Fred Hayman Beverly Hills, Inc.
Before Seeherman, Quinn and Hairston
Administrative Trademark Judges
Opinion by Hairston
Administrative Trademark Judge
For the second time, the Board has before it the question of whether the mark RODEO DRIVE for perfume, which is the subject of application Serial No. 73/503,188, is primarily geographically deceptively misdescriptive under Section 2(e)(3) [formerly Section 2(e)(2) ] of the Trademark Act. [FN1] We first considered this question in an ex parte appeal, In re Jacques Bernier, Inc., 10 USPQ2d 1955 (TTAB 1989), finding that RODEO DRIVE was primarily geographically deceptively misdescriptive of applicant's perfume. This decision, however, was reversed by the Court of Appeals for the Federal Circuit in In re Jacques Bernier, Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed.Cir.1990). The application was then published for opposition and a timely opposition was filed by Fred Hayman Beverly Hills, Inc.
In the amended notice of opposition, opposer alleges that it operates a retail boutique at 273 Rodeo Drive, Beverly Hills, California; that it sells perfumes, colognes, and other fragrance products under the trademark "273"; that it advertises and promotes its "273" fragrance products as originating from Rodeo Drive; that purchasers associate opposer's fragrance products with Rodeo Drive; that opposer has a bona fide intent to use the term Rodeo Drive as an integral part of trademarks for opposer's goods and services; that Rodeo Drive is well known for stores and boutiques that sell high-fashion merchandise, particularly perfume and other fragrance products; that applicant's perfume is not produced, distributed or sold on Rodeo Drive; and that applicant's mark RODEO DRIVE as used in connection with perfume is primarily geographically deceptively misdescriptive.
Applicant, in its answer, admits that opposer operates a retail establishment in Beverly Hills, California and that applicant's perfume is not produced or distributed on Rodeo Drive. Applicant denies the other allegations of the notice of opposition. [FN2]
The record in this opposition consists of the pleadings; the file of the opposed application; and the testimony (with exhibits) of opposer's witness Joseph Forkish and applicant's witnesses Stephen Berman and Erwin Damsky. The parties fully briefed the case and an oral hearing was held.
*2 We note that the parties, in their briefs, have discussed whether the recent amendments to the Trademark Act to implement provisions of the North American Free Trade Agreement (NAFTA) have a bearing on this case. Pursuant to the NAFTA-implementing changes to the Trademark Act, marks that are primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act may no longer be registered pursuant to Section 2(f). But Section 2(f), as amended, contains a grandfather clause which permits registration under this section of primarily geographically deceptively misdescriptive marks which became distinctive of the applicant's goods prior to enactment of the NAFTA Implementation Act. Inasmuch as applicant does not seek registration under Section 2(f), and has not sought to prove acquired distinctiveness, these amendments to the Trademark Act have no bearing on this case.
In support of its position that RODEO DRIVE is primarily geographically deceptively misdescriptive of applicant's goods, opposer offered the testimony of Joseph Forkish, a former vice-president and general manager of opposer. Mr. Forkish, who has held management positions with several other major fragrance companies, most recently was president and chief executive officer of a privately owned fragrance company. According to Mr. Forkish, the fragrance industry in the United States is divided into two segments, the "prestige" area and the "mass" area. This segmentation is based on consumer price, packaging, advertising and promotion, and the locations where the fragrances are generally sold. Opposer sells "prestige" fragrances at its retail boutique located at 273 Rodeo Drive. Mr. Forkish described the Giorgio of Beverly Hills fragrance, previously owned by opposer, as "the single most effective fragrance ever introduced anywhere in the world." [FN3] Using a map of Rodeo Drive, Mr. Forkish identified twenty-nine retailers of "prestige" fragrances along Rodeo Drive. He testified that these fragrances have dominated the "prestige" fragrance market in the United States. He indicated that a number of "prestige" fragrances have been launched on Rodeo Drive, beginning with opposer's Giorgio of Beverly Hills in 1980. Mr. Forkish testified that although the fragrances are not manufactured on Rodeo Drive, they are specifically formulated for the Rodeo Drive retailers. He testified that the retailers' stores on Rodeo Drive serve as "home base" for their fragrances. According to Mr. Forkish, the retailers, in their advertising, promotion and marketing of the fragrances, emphasize the association with Rodeo Drive. As evidence that the public associates fragrances with Rodeo Drive, Mr. Forkish identified printouts of four newspaper/magazine articles from the Nexis data base. Excerpts from these articles are set forth below:
Opium was the start of a powerful collection of heavy scents that would rock the industry in the 1980's. Giorgio would be the heaviest and most successful of the group. And in some ways, it was the most unlikely success story in the industry's history.
*3 Giorgio's creator[s], Fred and Gale Hayman, were Beverly Hills boutique owners without a college degree between them and without adequate financing. They had no experience in the perfume business. What they had was the trendy reputation of their boutique on Rodeo Drive. The Haymans were not selling their store as much as the lifestyle it had come to symbolize. By 1980, American consumers were on a status craze. "You are where you eat and you are what you drive" seemed to be credos of an aggressive, upwardly mobile urban work force. Trendy restaurants and flashy cars, preoccupations in Beverly Hills, had hit the rest of the country. Consumers from Sheboygan to Sutton Place had been primed by the media to associate Beverly Hills with Hedonistic glamour and the joys of materialism. ("Perfume Wars and the Smell of Success," Steve Ginsberg, The Washington Post, December 24, 1989).
Ten years ago, it would have seemed laughable that the West Coast would emerge as home of the No. 1 fragrance in the United States and the top-selling scent in one of Paris' major department stores, Galleries Lafayette. But a short seven years after its Rodeo Drive introduction, more people in America buy Giorgio than Obsession or Joy or Chanel No. 5. At Harrods, Harvey Nichols and Selfridge's, London's high-toned specialty stores, Giorgio ranks among the five best selling scents. And fueled by the $100 million success of Giorgio's fragrance, retailers around and about Rodeo Drive are riding the Zeitgeist, banking that a successful perfume can create a long-lasting image and continuing profits on a national and international level.
New Los Angeles-based fragrances are appearing as fast as retailers can bottle them. Bijan Pakzad, owner of the Rodeo Drive men's store, Bijan, introduced his women's perfume in the spring of 1987 and his men's cologne the following fall. Both are now considered main contenders in the prestige fragrance market. Jeff Stein says the volume of his Camp Beverly Hills boutique's cologne has reached more than $15 million, selling in department stores as well as in the 20 Camp shops across the country. Less than a year after it was introduced at the Rodeo Drive store, Theodore's Spoiled now sells in major department stores including Bloomingdale's in New York and Chicago. Bloomingdale's perfume buyer calls its performance "extraordinary."
Suddenly there is a fragrance industry in Beverly Hills that stretches far beyond the yellow-and-white striped awnings of Giorgio. Industry analysts place its sales volume at about $300 million, nearly one-tenth of the total $3.8 billion in U.S. fragrance sales. That's enough to make competitors take notice: Before 1981, barely a whiff of this business existed. ("Eau De L.A., The High Stakes Bid to Make Los Angeles A World Perfume Capital," Paddy Calistro, Los Angeles Times, November 13, 1988.
BEVERLY HILLS--Rodeo Drive's mystique has been built over the last 20 years largely by its high-priced women's apparel stores. The image of movie stars and Beverly Hills socialites buying their wardrobes along the street gave Rodeo romance and fueled the street's great success.
*4 Now, however, Rodeo's designer and high-priced women's apparel business is hurting with slow sales growth and a limping pace of store openings. Not surprisingly, the better women's business is less important.
Status leathers, jewelry, fragrances and art galleries are now at the center of the action. ("Fashion Takes a Back Seat on Rodeo Drive," Steve Ginsberg, Women's Wear Daily, May 22, 1989).
Theodore's Spoiled is banking on the continued success of the Rodeo Drive panache. "It may or may not be a positive image here in Southern California, but in the rest of America, Beverly Hills is our door opener," says Herb Fink, who created the scent with partner Lee Bronson. "But once the door is open, what matters is the scent. Today people want something pretty, not overpowering." As he points out, even in the life style category, subtlety is the new necessity. "No one is going to the office in something overwhelmingly sensual," Fink says.
Michael Gould, president of Giorgio Beverly Hills, a new division of Avon, maintains that market research has shown that the woman who buys a life style scent is interested in the prestige of the fragrance. Gould says when his firm introduces a new perfume in the spring of 1989, the emphasis will continue to be in Beverly Hills. ("New Fragrances Reflect the Return to Romantic Ideals," Paddy Calistro, Los Angeles Times, May 6, 1988).
Applicant offered the testimony of Erwin Damsky, its president, and Stephen Berman, a consultant to The Cosmetic, Fragrance, and Toiletry Association. Mr. Berman identified a directory of cosmetic suppliers entitled Beauty Facts. He testified that most fragrance suppliers are located in New York, as is the largest producer of fragrance compounds and essential oils. In addition, Mr. Berman testified that most fragrance packagers are located in the area comprising New York, New Jersey, Connecticut and Pennsylvania. When asked for his opinion as to the importance of Southern California to the fragrance industry, Mr. Berman stated:
A. It's negligible. I don't consider it a tremendous part of the industry as a manufacturing area for the industry. (Berman deposition, p. 35).
Mr. Damsky testified that applicant introduced RODEO DRIVE, which is not a "prestige" perfume, in 1984. When asked what he intended to achieve by naming the perfume RODEO DRIVE, he stated:
A. Well, I hoped to attract a large audience of women interested in a perfume that would give them a feeling of a better lifestyle. I hoped to do a lot of business with it, actually.
Q121 What do you mean by "a better lifestyle," specifically?
A. A better lifestyle. The better lifestyle of--the lifestyle of Rodeo Drive conjures up images of sun, wealth, beautiful women, handsome men. It conjures up things that dreams are made of. That is what I hoped to show.
I think that the object of a perfume, or a fragrance package, is to excite the interest of the buyer, to try to get them to try the perfume. If the perfume is good, it will sell; and if it's not good, it will not sell. That is the whole point of the package, to try to get the person to test the fragrance. (Damsky deposition, p. 32)
*5 Mr. Damsky identified a June 1993 issue of the trade publication Drug and Cosmetic Industry, which contains a list of the top twenty selling fragrances for 1992. According to Mr. Damsky, at least 14 of those fragrances are owned by companies which are based or headquartered in New York. In another trade publication, Beauty Fashion, Mr. Damsky identified advertisements for a number of new fragrances to be launched from various department stores located outside California.
In In re Nantucket, Inc., 677 F.2d 45, 213 USPQ 889 (CCPA 1982), the following test is set forth for determining whether a mark is primarily geographically deceptively misdescriptive:
1. Whether the primary significance of the mark as it is used is a generally known geographic place, and if so;
2. Whether purchasers are likely to believe, mistakenly, that the goods or services sold under applicant's mark have their origin in or are somehow connected with the geographic place named in the mark.
At the oral hearing, applicant argued that because this is an inter partes proceeding, a different test from that set forth in Nantucket (an ex parte case) should apply. Applicant offered no support for its contention and we have found none in the cases decided by our reviewing court. We note that the court has recognized the limited resources available to the PTO Examining Attorneys in attempting to prove that the public would make a goods/place association, i.e., believe that the goods originate in the place named in the mark. See In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865,868 (Fed.Cir.1985). This does not mean, however, that the test and/or burden of proof is different in inter partes cases.
There is no dispute that Rodeo Drive is a geographic location that is generally well known. The question is whether purchasers would associate Rodeo Drive with perfume. As the Court of Appeals for the Federal Circuit stated in Bernier, supra at 1727:
For the mark RODEO DRIVE to be "primarily geographically deceptively misdescriptive," Rodeo Drive itself would have to be associated with the product in such a way that the consuming public would be likely to assume that Rodeo Drive was the place in which the perfume originated.
The testimony of opposer's witness and the exhibits in support thereof show that a significant number of Rodeo Drive retailers sell "prestige" fragrances. In addition, opposer's evidence establishes that "prestige" fragrances have been launched on Rodeo Drive, with attendant publicity, and that many of the fragrances sold on Rodeo Drive have enjoyed tremendous success throughout the United States. Indeed, one of the articles introduced by opposer remarks that fragrances are at the "center of the action" on Rodeo Drive and another article refers to Rodeo Drive retailers as "riding the Zeitgeist," banking on successful perfumes to increase their profits and image. As evidenced by the newspaper/magazine articles, the launches of Giorgio and other "prestige" fragrances on Rodeo Drive have been reported throughout the United States. Following the launches of these perfumes, sales have expanded to major department stores throughout the country.
*6 The public, having been exposed to articles reporting on "prestige" fragrances launched on Rodeo Drive and having frequented stores carrying the fragrances of Rodeo Drive retailers, is likely to believe that perfumes originate there. This is especially true when, as Mr. Forkish testified, Rodeo Drive retailers, in the marketing and promotion of their perfumes, emphasize an association with Rodeo Drive. Thus, opposer's evidence demonstrates that the public would be likely to make the requisite goods/place association between perfume and Rodeo Drive.
In this case, we have no difficulty concluding that purchasers, upon seeing RODEO DRIVE on applicant's perfume, would be likely to mistakenly believe that the perfume originates on Rodeo Drive. This record contrasts sharply with that in the ex parte appeal where "the only evidence [of record] relating to the sale of any perfume [was] that Giorgio, which has a shop on Rodeo Drive, sells a perfume under the mark GIORGIO." Bernier, p. 1727. Simply put, opposer here has supplied evidence which was missing in the ex parte appeal.
The fact that other locations in the United States, particularly New York, are centers of fragrance manufacturing/packaging does not rebut opposer's case. That other locations are equally or better known for fragrances is not dispositive of whether the public would be likely to make a goods/place association between perfume and Rodeo Drive. Moreover, it is not necessary that the public believe that fragrances are manufactured on Rodeo Drive to also believe that applicant's perfume comes from Rodeo Drive. Here, opposer has shown that perfumes originate from fashion houses located on Rodeo Drive, and thus the public will be likely to believe that applicant's perfume comes from Rodeo Drive. See e.g., In re Nantucket Allserve, Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) [NANTUCKET NECTARS is primarily geographically descriptive of soft drinks, where company has its headquarters and research and development center, but not its manufacturing facilities, on Nantucket].
We recognize that Rodeo Drive evokes images of affluence and high-fashion. Opposer concedes as much. It is the Rodeo Drive lifestyle which applicant has sought to capture with its perfume and which has been useful to Rodeo Drive retailers in promoting their fragrances. This does not mean, however, that purchasers, upon seeing RODEO DRIVE on perfume, would believe that the perfume does not come from Rodeo Drive. To the contrary, the evidence of record establishes that the primary meaning of Rodeo Drive is geographical and that purchasers would be likely to expect perfume sold under the mark RODEO DRIVE to originate from Rodeo Drive. See Nantucket, Inc. supra.
This case, thus, is readily distinguishable from Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (SDNY 1951), affd, 204 F.2d 223, 97 USPQ 246 (2d Cir.1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) [HYDE PARK for men's suits suggests stylish clothing and not the geographic origin of the goods.] See also Philip Morris, Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) [PARK AVENUE is not geographically misdescriptive of cigarettes not from Park Avenue in New York City; rather, mark is used only to suggest a sophisticated aura linked to that street associated with fashionable living]; and In re Gale Hayman, Inc., 15 USPQ2d 1478 (TTAB 1990) [SUNSET BOULEVARD is not geographically misdescriptive of perfume not made on Sunset Boulevard in Los Angeles]. In these cases, unlike the present one, the evidence did not establish a goods/place association.
*7 We find that, as applied to applicant's perfume, RODEO DRIVE is primarily geographically deceptively misdescriptive.
Decision: The opposition is sustained and registration to applicant is refused.
FN1. As the result of a recent amendment to Section 2(e) of the Trademark Act, registration of marks which are primarily geographically deceptively misdescriptive is now prohibited under Setion 2(e)(3).
FN2. Although applicant, in its answer, made factual allegations which if construed liberally could be considered as a defense of acquired distinctiveness, applicant offered no proof at trial with respect to such a defense.
FN3. We note that in 1987 opposer sold this perfume to Avon Corporation.
May 8, 1996
On page 3, line 3 of paragraph 3 is amended by substituting "North American Free Trade Agreement" for "North Atlantic Free Trade Agreement".