Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FRUIT OF THE LOOM, INC.
FRUIT OF THE EARTH, INC., ASSIGNEE OF THE J. N. MICHELL COMPANY
Opposition No. 66,220; 67,133
June 30, 1987
Hearing: November 20, 1986
Nims, Howes, Collison & Isner for Fruit of the Loom, Inc.
Dressler, Goldsmith, Shore, Sutker & Milnamow, Ltd. for Fruit of the Earth, Inc., assignee of The J. N. Michell Company
Before Allen, Simms and Cissel
Fruit of the Loom, Inc. has opposed applications filed by Fruit of the Earth, Inc., assignee of the J. N. Michell Company, to register the marks FRUIT OF THE EARTH for hair shampoo, skin care cream, bath and body oil, toilet soap and skin lotion [FN1] and the mark reproduced below for skin lotion. [FN2]
Opposer asserts that applicant's marks so resemble opposer's previously used and registered mark FRUIT OF THE LOOM used alone and with a representation of various fruit for a variety of articles of clothing and line of textiles and related products as to be likely to cause confusion. Opposer asserts that the goods produced by its licensees have been extensively advertised on television, in newspapers and magazines and in point-of-sale displays and that its goods sold under the mark have acquired a fine reputation, the trademark having obtained 'outstanding celebrity' symbolizing its goodwill. Applicant has denied the essential allegations of the opposition. During this proceeding, the Board granted applicant's motion to assert a counterclaim to cancel one of opposer's 12 pleaded registrations, namely, Registration No. 993,305, issued September 24, 1974, Sections 8 and 15 affidavits filed, covering laundry detergents. As grounds for cancellation, applicant asserts that that registered mark has been abandoned through nonuse.
The issues presented for decision are, therefore, whether applicant's marks for its hair and skin care products so resemble opposer's pleaded marks incorporating the words FRUIT OF THE LOOM as to be likely to cause confusion and whether applicant has demonstrated that the pleaded registration mentioned above should be cancelled of the ground of abandonment. Because the counterclaim does not materially affect the central issue of likelihood of confusion, we shall treat the counterclaim last.
The record of this case consists of the discovery deposition of applicant's chairman of the board, answers to certain of opposer's interrogatories, and printed publications and official records (including registrations), all relied upon by opposer; the discovery deposition of opposer's executive vice president, answers to certain of applicant's interrogatories and requests for admission, printed publications and official records (including registrations), all relied upon by applicant; stipulated testimony; and testimony (and exhibits) of both parties. The parties have filed briefs on the case and have appeared through counsel at the oral hearing of arguments held in connection with these consolidated oppositions.
*2 The record demonstrates opposer's prior use and registration of the mark FRUIT OF THE LOOM alone and in conjunction with a design for a variety of articles of clothing (underwear of all types, pantyhose and outerwear such as shirts, jackets, slacks, shorts, dresses, scarves, ties, socks, gloves and pajamas), piece goods and textile products for household use such as sheets, blankets, towels and pillow cases, small appliance covers, sewing notions, laundry detergents, curtains and rugs, and shoes and belts. Through its parent corporation and licensee (Union Underwear Co., Inc.), opposer makes and sells men's and boys' underwear, sports shirts, dress shirts and sweaters. According to the testimony, FRUIT OF THE LOOM has become the number one national brand of ladies' panties. In the decade from 1975 to 1984, Union's annual sales of FRUIT OF THE LOOM licensed products rose from over $100 million to more than $350 million and opposer currently spends over $15 million annually in advertising and promoting such products. Opposer's goods have been advertised on television, in newspapers, in magazines directed primarily to women (Good Housekeeping, Ladies Home Journal, Family Circle, Redbook, etc.), in trade publications and at trade shows. Opposer's clothing products are sold primarily in grocery stores, drug stores and mass merchandisers.
Applicant first sold some of its shampoo and skin care products as early as 1980. Sold primarily through similar channels of trade as opposer's products, that is, supermarkets, chain drug stores, independent drug stores and mass merchandisers throughout the United States, total sales of applicant's personal care products (and not its juice products, which it also markets) bearing the mark through mid-1985 have approached $12 million. During this same period of time, applicant's spent nearly $2 million advertising and promoting its FRUIT OF THE EARTH products in popular magazines, on radio and television, through cooperative advertising with retailers, in newspapers, trade publications, as well as catalogs and promotional literature and at chain drug and health food trade shows.
While it is true that the goods of the parties are sold in some of the same channels of trade and advertised in some of the same media, we conclude that, on this record, confusion is not likely. First, there are obvious differences in appearance and sound of the marks of the parties. Moreover, in view of the differences in the meanings of 'Earth' and 'Loom', the connotations and commercial impressions of the respective marks are distinct. Opposer's mark has the connotation of a product of a loom, that is, a textile or cloth woven by a machine, whereas applicant's mark FRUIT OF THE EARTH has the connotation of natural products or ingredients derived from the earth. This connotation is enhanced by applicant's promotion of its goods as 'Nature Inspired.'
There are also obvious differences between opposer's underwear, pantyhose, piece goods, rugs and other textile products, on the one hand, and applicant's hair and skin care products. These goods have obviously different manufacturing processes and uses. While it is true that these goods may be found in some of the same channels of trade, there is no per se rule that similar marks found on products sold in the same channels of trade must lead to a conclusion of likelihood of confusion. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 152 (CCPA 1978) and Federated Food, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). A wide range of goods is sold in such outlets as supermarkets and drug stores, but applicant's products are displayed in the health and beauty aids section and not in the clothing or domestics aisles.
*3 The absence of instances of actual confusion, misdirected mail or even inquiries despite concurrent advertising and sales of millions of dollars by both parties of the respective products throughout the United States in the same channels of trade for over five years is also some evidence that confusion is not likely.
We have also considered the renown of opposer's mark with respect to undergarments. As indicated above, there is testimony that applicant's brand is the number one national brand of ladies' panties. Opposer's sales and advertising over the years have been very substantial. Moreover, both parties have pointed to two surveys taken by opposer which where made of record by applicant and stipulated into this record. [FN3] These surveys show extremely high unaided brand awareness among the adult population. It is applicant's position, with which opposer does not seem to quarrel, that these surveys are proper evidence of consumer perceptions of opposer's mark and that, since they were done before litigation, they are inherently more trustworthy. The surveys show high consumer recognition and association of opposer's FRUIT OF THE LOOM boys' and men's underwear but not of other products. For example, the 1981 survey showed only one percent of the respondents surveyed identified opposer as selling pantyhose and children's clothing, despite the fact that these products had been sold by opposer under the mark. It is applicant's position that opposer's mark is best known for underwear and that the fame of the FRUIT OF THE LOOM mark does not extend beyond that field. Since awareness of opposer's non-underwear clothing is relatively small, applicant argues that opposer cannot reasonably argue that consumers would expect to see opposer sell products such as hand cream.
Applicant's position is not without merit. Moreover, where there are significant differences between the mark whose fame is asserted and the mark with which it is alleged to be confusingly similar, the 'famous mark' argument is less persuasive. Land O' Lakes, Inc. v. Land O' Frost, Inc., 224 USPQ 1022, 1026-27 (TTAB 1984) (involving food products which could be used together).
With regard to the relationship between the goods, we have disregarded opposer's testimony and evidence, objected to by applicant, concerning its licensing activities under the mark in Italy and Japan. Trademark activity outside the United States is ineffective to create rights in this country. Lever Brothers Co. v. Shaklee Corp., 214 USPQ 654, 657 n. 8 (TTAB 1982) and cases cited there.
We have considered, however, opposer's argument and the evidence submitted in support thereof that confusion is more likely because the public has come to recognize that cosmetic and toiletry products and apparel are frequently sold or sponsored by the same entities under the same trademarks (CALVIN KLEIN, CANDIE'S, GLORIA VANDERBILT, GIORGIO ARMANI, CHRISTIAN DIOR, GEOFFREY BEENE, SERGIO VALENTI, CHANEL and BRUT). While we have carefully considered this evidence, we agree with applicant that the link between cosmetics and clothing is generally apparent in the category of so-called designer or high-fashion marks, and usually involves the names of well-known designers. [FN4] In any event, we believe that the substantial differences between the involved marks are enough to avoid likelihood of confusion. Cases cited in opposer's brief finding likelihood of confusion generally involved identical marks, frequently surnames (see Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720 (TTAB 1984) (ARPEL)) or other famous marks (see All England Lawn Tennis Club v. Creative Aromatiques, 220 USPQ 1069 (TTAB 1983) (WIMBLEDON)).
*4 With respect to applicant's counterclaim for cancellation, suffice it to say that we do not believe that a prima facie case of abandonment (2 years of nonuse) has been made out, but find that the registered mark has nevertheless been abandoned as a result of discontinued use with intent not to resume. According to the testimony of George Kalidonis, an officer of a former licensee (Climaco Corporation), manufacture of the laundry products under the mark was discontinued at the end of 1981. Applicant acknowledges that the remaining inventory was liquidated in 1982. Thereafter, neither opposer nor any of its licensees has manufactured laundry products under the mark, nor have there been any discussions with any potential licensee to re-market such a laundry product.
While two years' nonuse of a trademark may constitute prima facie abandonment under Section 45 of the Act, 15 USC § 1147, here such a prima facie case has not been made out. This is because applicant's counterclaim charging abandonment was filed in April 1984, and even applicant has acknowledged that sales of laundry detergent under the mark continued into 1982. Since it is not clear from this record when in 1982 the inventory was exhausted, applicant has failed to make out a prima facie case.
Nevertheless, the testimony of David Drescher, opposer's executive vice president, given in a discovery deposition in 1984 demonstrates that applicant's discontinued use, while not amounting to two consecutive years, was accompanied by an intent not to resume.
Q201 Over the last 2 to 3 years there was no intent by Fruit of the Loom to market any other products other than what it is presently marketing; is that correct, sir?
MR. HOWES: That is with respect to the United States you were talking about.
MR. OLSON: With respect to the United States.
Q202 That is correct?
Q226 Have there ever been any plans to resume sales of laundry detergents?
Q227 Have there been any discussions on that subject, sir?
A Not recently.
Q228 Have there been in the past, that you are aware of?
A I think there may have been some several years ago.
Q237 But there has never been any intent to go back into the laundry products business; is that correct, sir?
Q710 Now referring to page 7, interrogatory No. 7, what goods have the trademark FRUIT OF THE LOOM been used on in the past which is no longer used on today?
A I would have to refer to the records to give you an accurate listing.
Q711 Which ones are you aware of?
A Detergents, fabric softener, crib sheets.
Q712 Not in the college-type crib sheets, but for infants.
This testimony makes clear that opposer has no intent to resume production of laundry detergent under the mark. This, coupled with opposer's discontinued use, is sufficient to establish abandonment. Hamilton Burr Publishing Company v. E.W. Communications, Inc., 216 USPQ 802, 806-7 (TTAB 1982).
R. L. Simms
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 296,176, filed February 9, 1981, claiming use since March 7, 1980.
FN2. Serial No. 254,999, filed March 24, 1980, claiming use since March 7, 1980.
FN3. 'An Exploration Of What Is Communicated By The Current Fruit Of The Loom Trademark' prepared by Oxtoby-Smith Inc. in April 1976 and 'Fruit of the Loom Line Extension Study' prepared by Grey Advertising in January 1981. Those studies have also been referred to in the discovery deposition of David Drescher, opposer's executive vice president. The methodology and support documents are of record.
FN4. In this regard, we note that the 1981 line extension study indicated that survey respondents rated opposer's products lowest on style and fashion (pp. 37 and 54) and that any new products 'are less likely to be [viewed] better than current brands in terms of style and fashion.' (p. 16)
CONCURRING IN PART AND DISSENTING IN PART OPINION
David B. Allen
Since the evidence establishes beyond doubt that opposer has discontinued sales of FRUIT OF THE LOOM laundry detergent without any intention to resume use of the mark on these goods, I agree with the majority that the counterclaim to cancel Registration No. 993,305 must be granted. However, I would sustain both oppositions because, considering all of the relevant factors, it is my opinion that continued use of the mark FRUIT OF THE EARTH, applied to applicant's hair shampoo, skin care cream, bath and body oil, toilet soap and skin lotion, is likely to result in purchaser confusion because purchasers are apt to believe, erroneously that such products have been produced or sold under a license from the owner of the FRUIT OF THE LOOM mark. My conclusions as to the applicable factors are set forth below.
As the majority has held, there is no question that the channels of trade through which and class of purchasers to which the goods of both parties are marketed are the same. [FN1] However, concerning similarity of the goods, I do not think the majority has given sufficient consideration to all of the goods identified in opposer's FRUIT OF THE LOOM registrations and seems distracted from doing so in evaluating relatedness of the parties' goods by the fact that the goods in respect of which FRUIT OF THE LOOM is famous are boys' and men's underwear. While the factors of relatedness and fame of the senior party's mark necessarily come together in the final evaluation of the likelihood of confusion, that a mark may be famous only for certain goods does not mean the relatedness evaluation should be limited only to those goods. Thus, a person who is well aware of the mark's fame for boys' and men's underwear (e.g., a housewife and mother) may also be a purchaser of FRUIT OF THE LOOM lingerie, panties, slips, brassieres, negligees, hosiery, pantyhose, scarves, blouses, dresses and goods of that character, all encompassed in the identifications of goods in opposer's registrations, and, absent any restriction therein, all comprising fashionable as well as ordinary apparel. Granted such a person might respond to a question asked by a brand awareness market researcher in such a way as to give statistical importance to the boys' and men's underwear commercial impression of the brand, this does not mean her reaction to a confusingly similar mark encountered in the marketplace on soap, shampoo and cosmetic products might not also be influenced by her experience as a purchaser of FRUIT OF THE LOOM women's fashion apparel. Indeed, the likelihood that she would perceive cosmetics, soap and shampoo products as a further extension of the famous brand name is enhanced by the fact that she is already aware of the move from boys' and men's underwear to another category of apparel, i.e. fashion apparel for women.
*6 In this regard, I do not consider the foreign licensees' use of FRUIT OF THE LOOM for soap, shampoo and cosmetics products wholly irrelevant to the relatedness issue. Whereas foreign use of a mark does not ordinarily influence purchaser perceptions in this country, and the evidence does not demonstrate that it does in this case, see, R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Co., 226 USPQ 169, 173 (TTAB 1985), I am persuaded that if entities (foreign or not) are willing to pay royalities for use of the mark on soap, shampoo and cosmetics, the persons making those decisions probably believed there would be some value in the goodwill of the FRUIT OF THE LOOM textile and wearing apparel mark which would carry over to the newly licensed goods. To that extent, the evidence tends to corroborate relatedness.
More important, it seems to me, is the fact that FRUIT OF THE LOOM has been licensed in this country for goods other than textiles and apparel, e.g. sewing notions and laundry detergents. [FN2] These licenses demonstrate to purchasers that expansion to other non-apparel/textile products would not be an unexpected development.
I do not suggest by the above that soap, shampoo and cosmetics are bound to be considered related to fashion apparel in all circumstances. However, it seems to me a sufficient degree of relatedness is present here in light of the other factors which, in my opinion, strongly support opposer's case, that purchaser confusion is likely.
(ii) The Circumstances of Sale
There is no question that purchasers of both parties' products are ordinary persons who exercise no special standard of care in selecting them. The fallibility of such purchasers to recall marks correctly is a significant factor in determining the likelihood of confusion.
(iii) Similarity of the Marks
I conclude, contrary to the majority's analysis, that the marks strongly resemble each other. Three words of each mark are identical and the difference in the fourth is insufficient, in my opinion, to prevent source confusion. See, e.g., Toys 'R' Us v. Lamps R Us, 219 USPQ 340, 345 (TTAB 1983). In Toys 'R' Us, we found likelihood of confusion because the common 'R Us' portion was the dominant source indicating feature, the other parts indicating, merely, the kind of goods sold and because the 'R' US portion of opposer's mark was deemed a unique combination of terms which had acquired considerable strength as an indication of opposer's operations by virtue of its extensive advertising and promotional efforts. Similarly here, it seems to me, in the context of opposer's goods, the common 'FRUIT OF THE' portion is dominant in that the terms LOOM and EARTH suggest characteristics of the products, [FN3] and the 'FRUIT OF THE' portion is also a unique combination of terms which has acquired considerable strength in opposer's mark as a result of more than a century of continuous use.
*7 I also agree entirely with opposer's point, main brief, 26-27, that the marks overall are remarkably alike in their lilt, rhythm and cadence. In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1949) [Affirming the Board's decision, THE CASH MANAGEMENT EXCHANGE found confusingly similar to CASH MANAGEMENT ACCOUNT due in part to the marks' 'similarity in cadence.']
(iv) Fame of the Prior Mark
The unquestioned fame of opposer's mark strongly favors opposer's case because the propensity of consumers to associate a relatively unknown mark with one which is well known to them increases the likelihood of confusion. Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ 2d 1445, 1453 (TTAB 1986), and cases cited therein.
(v) Third-Party Use
The only credible evidence of third party use of marks comprising 'FRUIT OF THE' is the testimony by Jerome N. Mitchell, applicant's board chairman, concerning his personal knowledge of FRUIT OF THE MONTH gift fruit baskets, a mark totally different in commercial impression and used on totally different products than are involved here. In fact, applicant found no third party use or registration of any mark consisting of 'FRUIT OF THE' followed by some other term in either the clothing or cosmetic field. The dearth of any relevant third party marks demonstrates the uniqueness of opposer's mark, a factor which, in addition to the mark's unquestioned fame, increases the propensity of purchasers to be confused when confronted with similar marks of others. E.g., Finn's v. Cooper's Incorporated, 292 F.2d 555, 130 USPQ 269, 272 (CCPA 1961); Berghoff Restaurant Co. v. Washington Forge, Inc., 225 USPQ 603, 610- 11 (TTAB 1985).
I do not consider the absence of evidence of actual confusion to be very significant. Applicant's present line of products are low cost items designed to sell through mass merchandisers such as K-Mart. A customer dissatisfied with his or her purchase of a FRUIT OF THE EARTH cosmetic costing from one to a few dollars is unlikely to complain to Fruit of the Loom Inc. about it even if the purchase was made in the erroneous belief that it was related to that source. Most purchasers share a natural reluctance to admit they have been deceived; hence, where only a small loss has been incurred, they will generally simply discard the unsatisfactory product and avoid others bearing the same mark in the future. Union Carbide Corporation v. Ever-Ready, Inc. 531 F.2d 366, 188 USPQ 623, 639 (7th Cir. 1976); Piccolo Sportswear, Inc. v. Mast Industries, Inc., supra, 227 USPQ at 713 (TTAB 1985). That purchasers do not report such incidents does not lessen the damage resulting therefrom to the goodwill of the mark with which the erroneous association was made, however.
FN1. I do not, however, share the majority's apparent belief, slip opinion, supra, 6, that display of the products in different sections of the retail markets in which they are sold lessens the likelihood of confusion resulting from the contemporaneous use thereon of the same or similar marks. Obviously, no one is going to pick up a cosmetic product thinking it is wearing apparel, however similar the marks may be. The crucial question here is whether source confusion is likely. As to that, whether the goods are contiguous or not is immaterial.
FN2. That the mark has been abandoned for laundry detergent does not erase the significance of that previous use to purchasers in terms of their perceptions of areas of natural expansion. See, Piccolo Sportswear, Inc. v. Mast Industries, Inc., 227 USPQ 710, 712 (TTAB 1985). Most purchasers would not be aware of opposer's management decision not to resume use on such products.
FN3. Applicant asserts the mark was adopted to suggest natural ingredients, derived from the earth, i.e., 'earth products,' a somewhat bizarre commercial impression for products used in hair and skin care.