Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 HELENE CURTIS INDUSTRIES, INC.
SUAVE SHOE CORPORATION
August 30, 1989
Hearing: May 17, 1989
Opposition No. 65,607 to application Serial No. 250,892 filed February 20, 1980 and Cancellation No. 13,460.
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson and Roy A. Wentz for Helene Curtis Industries, Inc.
Lowe, Price, Leblanc, Becker & Shur for Suave Shoe Corporation
Before Sams, Simms and Quinn
Opinion by Quinn
In these consolidated proceedings, [FN1] Helene Curtis, Inc. ("plaintiff"), an Illinois corporation, has opposed an application and sought to cancel a registration owned by Suave Shoe Corporation ("defendant"), a Florida corporation.
Defendant's application covers the mark SUAVE for shoes [FN2] and the registration is for the mark shown below for shoes. [FN3]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
In its pleadings, Helene Curtis, Inc. asserts essentially that defendant's marks, as applied to defendant's goods, so resemble plaintiff's previously used and registered mark SUAVE for hair dressing, [FN4] hair spray and creme rinse [FN5] and dandruff control shampoo, [FN6] as to be likely to cause confusion, mistake or deception. Suave Shoe Corporation, in its answers, denied the salient allegations of plaintiff's complaints. In denying plaintiff's allegations regarding defendant's first use of its mark, defendant asserts new dates of first use prior to the ones set forth in its application and registration.
The record consists of the files of the opposed application and the registration sought to be cancelled; status and title copies of plaintiff's three pleaded registrations of the mark "SUAVE"; numerous third-party registrations introduced by plaintiff; portions of the discovery depositions of five of defendant's officers; [FN7] trial testimony of one of plaintiff's officers; [FN8] stipulated trial testimony of plaintiff's witness; [FN9] stipulated trial testimony of defendant's witnesses; [FN10] trial testimony of three of defendant's witnesses; [FN11] a dictionary definition of "suave"; certain of plaintiff's answers to defendant's interrogatories; an article regarding opposer in a printed publication; several third-party registrations introduced by defendant; a file from an Office proceeding; a trademark search report; and a consent to registration from plaintiff to a third party. In rebuttal, plaintiff has introduced additional stipulated testimony; [FN12] portions of the discovery depositions of four of defendant's officers pursuant to Trademark Rule 2.120(j)(4); [FN13] trial testimony of plaintiff's survey expert; [FN14] additional portions of the discovery deposition of defendant's survey expert; [FN15] and an expired third-party registration. In addition to the deposition testimony, the record includes numerous exhibits introduced in connection therewith. Each party undertook a survey on likelihood of confusion and introduced its own survey as evidence. Numerous objections and motions to strike have been filed by both parties relative to the testimony and other evidence in this case. These objections have been taken into account during our determination of the issues. Both parties filed briefs and both participated in an oral argument.
*2 Because plaintiff has made of record status and title copies of its pleaded registrations, there is no issue with respect to plaintiff's priority. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, the testimony demonstrates that plaintiff began using its SUAVE mark long before the defendant began using either of its marks.
Thus, the issue in the case now before us essentially is whether defendant's SUAVE marks so resemble plaintiff's SUAVE mark for personal care products as to be likely, when applied to defendant's shoes, to cause confusion or to cause mistake or to deceive within the meaning of Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d).
Plaintiff, as shown by the testimony of Gilbert Smith, its corporate vice president and president of its consumer products division, manufactures and sells a wide variety of personal care products which are, in plaintiff's words, "for use in the care of personal appearance and grooming." Plaintiff's personal care products, for over forty years, have included a line of products sold under the mark SUAVE. These products include hair shampoos and conditioners, deodorants, hair spray, hair setting gels, hair mousse and skin lotion. Products bearing the SUAVE mark are sold in all fifty states and overseas as well. The products are sold through a variety of retail outlets, including department stores, mass merchandisers, drug stores, grocery stores, convenience stores, warehouse stores and "dollar stores" (a small, generally rural outlet that sells products at prices in multiples of a dollar). Mr. Smith estimates that about half of its personal care items are sold in food stores, with thirty percent sold in drug stores, and the remaining twenty percent sold in mass merchandise stores. The total number of retail stores selling plaintiff's SUAVE products exceeds 150,000.
Plaintiff has nationally advertised its products under the SUAVE mark since the late 1940's. These advertising efforts have been made through a variety of media, including newspapers, magazines, radio and television. Plaintiff also has engaged in cooperative advertising of its products bearing the SUAVE mark. The newspaper ads are run by food, drug and mass merchandise stores which sell these products. Other promotional activities include direct-mail samples, coupons, point-of-purchase displays and distribution of items such as T-shirts, pens, pencils, cups and other items bearing the SUAVE mark. Over the years, plaintiff has expended tens of millions of dollars in advertising its products under the SUAVE mark. [FN16]
Plaintiff's SUAVE shampoo is the nation's largest selling brand of hair shampoo. Hair conditioners sold under the SUAVE mark are the largest selling conditioners in the nation. [FN17] Mr. Smith testified that plaintiff's SUAVE hair shampoo is the primary brand of shampoo in sixteen million U.S. households, more than any other brand in the country. Plaintiff has a much smaller market share with its products in the hair dressing, hair mousse, hair spray, deodorant and skin lotion categories. Mr. Smith indicates that plaintiff sells under its SUAVE mark about 28 different types of shampoos, 15 conditioners, 2 mousses, 3 hair sprays, 4 skin lotions and 4 deodorants. [FN18]
*3 By virtue of the extensive advertising, promotion and sale of plaintiff's personal care products bearing the SUAVE mark, plaintiff's mark has become extremely well known. This fact is confirmed by a market research study referred to by Mr. Smith showing that 89 percent of consumers in the United States are aware of the SUAVE mark. [FN19] Likewise, the survey conducted by defendant in this case showed that 84.8 percent of the survey respondents were aware of shampoo, rinses or conditioners bearing the SUAVE mark. In its brief, defendant concedes that the SUAVE mark is "very well-known for personal care products" (p. 6).
Defendant manufactures, according to Alan Wainberg, vice president, a broad line of leisure and athletic footwear of the sneaker and running type. [FN20] In its 1984 annual report, defendant lists its products as "tennis, boat, basketball and jogging type shoes and other styles." Mr. Wainberg characterized the products as "low price, high volume" footwear for men, women and children. Defendant's shoes are sold through a variety of stores, including mass merchandisers, and retail, discount, variety, drug and food chains, and to shoe and sporting goods wholesalers. In 1981, defendant's sales of its shoes under the marks totaled $69 million.
Defendant's shoes are sold by its sales force, comprising six sales persons, both directly to retailers and to jobbers or rack jobbers who then resell defendant's shoes to retail stores. [FN21] The shoes sold by defendant generally are unbranded or, upon request, branded with the customer's brand names.
The SUAVE marks are used on cartons containing defendant's shoes that are shipped to its customers. The SUAVE marks are not used on the shoes themselves or on the individual boxes in which the shoes are packaged. [FN22] Until 1982, the use of the mark SUAVE on the shipping cartons was always followed by the words "Shoe Corporation." The ultimate consumer does not see the marks in connection with defendant's shoes, unless the consumer happens to see a shipping carton in a store.
Defendant's advertising is directed almost exclusively to the trade. The marks are used on catalogues distributed to salesmen and customers, primarily at trade shows, as well as on defendant's annual reports. Advertising sheets have been inserted in trade magazines. Defendant also has distributed promotional materials such as T-shirts, keychains, and pens bearing the marks. Defendant's shoes are promoted to the trade at four national shoe shows and at regional shoe shows on an annual basis.
Our determination of likelihood of confusion must be based on our analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See: Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed.Cir.1984), citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed pertinent in the case before us are discussed below.
Similarity of the Marks
*4 The marks of the parties in typed form are identical. With respect to defendant's registered logo mark, we do not believe that the additional design matter appearing therein is sufficient to detract from the identity of the literal SUAVE portion of defendant's mark with plaintiff's entire mark. While there are obvious differences between plaintiff's mark and defendant's registered mark, the marks are similar in overall commercial impression. The dominant portion of defendant's logo mark is the SUAVE word portion and there is nothing improper in giving more weight to this particular portion. In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985). It has consistently been held that where a mark comprises a word portion and a design portion it is the word feature which is controlling. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985). Nevertheless, in considering the marks in their entireties, as we must, the parties' marks are similar in sound, appearance and meaning.
The Fame of Plaintiff's Mark
We have little trouble concluding that, based on plaintiff's extensive advertising, promotion and sale of its products bearing the SUAVE mark for over forty years, SUAVE has become a very well-known trademark. [FN23] In the past it has been observed that the propensity of consumers to associate a relatively unknown mark with one which is well known to them increases the likelihood of confusion, mistake or deception. See, e.g., Specialty Brands, Inc., supra at 1284. Defendant itself concedes that plaintiff's SUAVE mark is "very well known for personal care products", a concession not unfounded in view of defendant's survey showing that 84.8 percent of the respondents were aware of plaintiff's SUAVE products. [FN24] Further, Mr. Wainberg has testified that people, upon hearing that he is employed by "Suave", "have mentioned or may have mentioned about the Suave cosmetics." (p. 57).
Defendant, in an attempt to undercut the fame of the SUAVE mark, suggests that the "famous mark" doctrine does not apply in this case because plaintiff's mark is used in connection with "economy products." The merits of this suggestion are not well taken. We do not believe that the low price of plaintiff's products detracts from the fame of the mark SUAVE as applied to personal care products. In the past, marks used in connection with relatively inexpensive goods have nonetheless been treated, when appropriate, as "famous". See: Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 833 F.2d 1565, 227 USPQ 541 (Fed.Cir.1985) [HUGGIES for disposable diapers]; Specialty Brands, Inc., supra [SPICE ISLANDS for teas]; and Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.Cir.1983) [GIANT for private label food products]. Moreover, to the extent that the mark SUAVE may be perceived as suggestive when applied to opposer's goods, we believe that such suggestiveness, if any, is slight and does not diminish the fame of the mark.
*5 In our opinion, based on the record before us, we conclude that the SUAVE mark is indeed famous as applied to personal care products. [FN25]
The Board has in the past given weight to evidence of widespread and significant use by third parties of marks containing elements in common with the marks being opposed on grounds of likelihood of confusion to demonstrate that confusion is not, in fact, likely. [FN26]
The evidence submitted by defendant in this case falls far short of being accorded any probative value. Defendant's reliance on four prior registrations is of no consequence. Third-party registrations are of little weight in determining likelihood of confusion. They are not evidence of use of the marks shown therein and they are not proof that consumers are familiar with them so as to be accustomed to the existence of similar marks in the market place. Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). [FN27]
The other uses relied upon by defendant have, quite appropriately in our view, been objected to by plaintiff. As with the third-party registrations, defendant's claims of third-party uses of SUAVE and variations thereof by a radio station and on billboards, or in connection with jewelry and clothing, or in phone book listings, are not persuasive to show any weakness of plaintiff's mark, absent some evidence of use. Aside from some of the hearsay and relevancy problems raised by plaintiff, this evidence simply does not weaken in the least the fame of plaintiff's mark as applied to personal care products.
In sum, the evidence of third-party use is of no probative value in determining likelihood of confusion in this case.
Defendant has pointed to both of the parties' being unaware of any instances of actual confusion despite almost thirty years of concurrent use of the marks.
The issue before us, however, is not one of actual confusion, but only the likelihood of confusion. As has often been stated, evidence of actual confusion is hard to obtain. Moreover, actual confusion is but one factor in our analysis.
In this case, defendant has stated, and the evidence demonstrates, that its use of the SUAVE marks has not been apparent to the ultimate consumer. This may, in the main, explain the lack of actual confusion since there has been limited opportunity for such confusion to occur in the market place. [FN28]
The Circumstances of Sale
The goods involved in this case are relatively inexpensive. Defendant has characterized its shoes as "low price" and a review of plaintiff's representive advertising shows that its personal care products range in price from one dollar to a few dollars. Given the low cost and the specific nature of the goods, the parties' shoes and personal care products are subject to impulse purchase and frequent replacement. It has often been stated that purchasers of such products are held to a lesser standard of purchasing care and, thus, are more likely to be confused as to the source of the goods. See, e.g., Specialty Brands, Inc., supra at 1282.
Similarity of the Goods, Their Purchasers and Channels of Trade.
*6 The parties have spent a considerable amount of time during trial and in their briefs on the issue of the relatedness of the goods. Plaintiff's position essentially is that personal care products and shoes are in the nature of fashion accessories and that it is common for the same entity to sell both personal care and wearing apparel products under the same mark; thus, plaintiff concludes, purchasers who are familiar with SUAVE personal care products would, upon encountering defendant's shoes under the identical mark, believe that they originate with the same source or were in some way connected with the manufacturer of the personal care products. Defendant, in disputing plaintiff's position, asserts that the "common phenomenon" relied upon by plaintiff concerns designer or house marks and that, in contrast, there are instances where personal care and wearing apparel products are sold under similar marks by unrelated entities.
It has been repeatedly held that, when evaluating the likelihood of confusion in proceedings concerning the registrability of marks, the Board must consider the identifications of goods set forth in the relevant application and/or registration(s), regardless of what the record may reveal as to the particular nature of the parties' goods, their actual channels of trade, or the class of purchasers to which their sale is, in fact, directed. Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.Cir.1987).
The evidence shows that defendant's mark does not appear on the shoes or even on the shoe boxes encountered by the ultimate purchasers of the goods. [FN29] Since plaintiff sells its goods at retail whereas defendant sells its goods to retailers and wholesalers (and the product never reaches the ultimate consumer under the mark at the retail level), there is likely no one ultimate buyer who will be confronted with both products under the marks. Nonetheless, since neither the goods of plaintiff nor those of defendant are restricted as to trade channels, they must be presumed to travel through the channels of trade normally associated with said goods. Moreover, the products of both parties are, in fact, sold in the same stores to the same classes of purchasers. The record demonstrates that a number of retail stores carry the products of both parties, including K-Mart, Zayre, Eckerd's, McCrory's, Winn Dixie and Safeway. [FN30]
In connection with its related goods arguments, plaintiff has made a record numerous third-party registrations and exhibits to show that it is common in the trade for the same mark to appear both on personal care products and wearing apparel emanating from the same source. Defendant, on the other hand, has introduced registrations and exhibits to show registration and use of the same or similar marks on these same types of products, but emanating from different sources.
In considering this evidence, we have kept in mind defendant's observation that the link between personal care products and wearing apparel is generally apparent in the category of so-called designer or high-fashion marks, and usually involves the names of well-known designers [GUCCI, PIERRE CARDIN, RALPH LAUREN, ANNE KLEIN, LAURA ASHLEY]. Defendant also has pointed out that other evidence relied upon by plaintiff involves house marks [SEARS, BROOKS BROTHERS, AMWAY, WALGREENS]. We do note, however, that some registrations and uses do not appear to fall in either category [MATA HARI, RACQUET CLUB, HELLO KITTY, ESCADRE, KIOSK, CARABINE].
*7 The goods of the parties may be classified as both falling within the broad category of fashion aids. Shoes and hair care products are both used in the scheme of presenting oneself in a desired, stylish manner; they are related to the extent that the goods are part of the overall fashion picture which encompasses dress and beauty aids. While not specifically on point, numerous cases have been decided wherein it was recognized that wearing apparel and toiletries or cosmetics are related products. See, e.g. Villager Industries, Inc. v. Merle Norman Cosmetics, Inc., 164 USPQ 215 (TTAB 1969); The All England Lawn Tennis Club (Wimbledon) Limited v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983); David Crystal, Inc. v. Estee Lauder Inc., 167 USPQ 411 (TTAB 1970); Faberge, Inc. v. Madison Shirt Corp., 192 USPQ 223 (TTAB 1976); and Clairol, Inc. v. Topaz Hosiery Mills, Inc., 161 USPQ 545 (TTAB 1969).
We recognize that there is not, of course, a per se rule in this area. We must not lose sight, however, that defendant's typed mark is identical to plaintiff's famous mark. As has been stated in the past, the greater the degree of similarity in the marks, the lesser the degree of similarity that is required of the products on which they are used in order to support a holding of likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
We concede that the goods of the parties are different, but that concession does not necessarily preclude a finding of likelihood of confusion. The issue to be determined in cases such as this is not whether the goods of plaintiff and defendant are likely to be confused but rather whether there is a likelihood that purchasers will be misled into the belief that they emanate from a common source. Thus, the goods need not be identical or even competitive in nature (nor need they necessarily be sold through the same trade channels), in order to support a finding of likelihood of confusion. It is sufficient for the purpose that the goods are related in some manner and/or "may end up in the same purchaser's hands under conditions where that purchaser might logically suppose they had common origin because of the use thereon of identical ... trademarks." See: Luzier Inc. v. Marlyn Chemical Co., Inc., 442 F.2d 973, 169 USPQ 797, 799 (CCPA 1971). See also: Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986) and cases cited therein. In sum, we find the goods to be so related.
Defendant's principal evidence in support of its defense that confusion is unlikely are the results of a consumer telephone survey commissioned by it for use in this case. More specifically, defendant offered the testimony of Arthur D. Kirsch, Ph.D., a professor of statistics and psychology and currently Chairman of the Department of Statistics at George Washington University in Washington, D.C. A sample of 1002 respondents were asked the same series of questions involving the source or origin of goods bearing the same mark. The questions concerned products bearing the marks SUAVE and REVLON, and a fictitious mark PALISADES. [FN31] An initial "screening question" was put to all respondents of the sample as follows:
*8 Do you use or purchase any of the following products?
b. Hair spray
d. Skin lotions
e. Hair rinses or conditioners
f. Shaving creams
g. Face powder
h. Hair dressing
If the respondent answered "yes" to any one of the above, the interview proceeded to the crucial likelihood of confusion question:
Do you think that the same company that makes Suave shampoo and Suave rinses and Suave hair conditioners makes or is likely to make in the future any of the following products? [FN32]
a. Suave toothpaste
b. Suave house paint
c. Suave lipstick
d. Suave fingernail polish
e. Suave antiperspirant or deodorant
f. Suave crackers, biscuits and breads
g. Suave women's underwear
h. Suave men's sports jackets
j. Suave watches
k. Suave cameras
Of the respondents, 7.6 percent indicated "yes" to the question regarding Suave shoes. The "Conclusion" of the survey reads as follows:
It is very clear from the Tables presented that the incidence of attribution to the maker of Suave hair products as the maker or potential maker of Suave shoes is very low, and is only slightly (7.6%) higher than the overall noise level of persons who "had heard" of the fictitious trademark Palisades (5.4%). This incidence is based on a random probability sample of persons 16 and over living in households with a telephone and who qualified by using or purchasing one or more of the previously listed personal care products.
Plaintiff, during its rebuttal testimony period, introduced its own telephone survey conducted under the supervision of Elrick and Lavidge, Inc., a market research firm. [FN33] The crucial question posed to 500 respondents read:
Do you think that the same company that makes Suave shoes makes or is likely to make in the future any of the following products?
The interviewer then read, one at a time, the names of the same eleven products used in defendant's survey. The product sequence was altered slightly from the defendant's survey. [FN34] Of the respondents, 53 percent answered "yes" as to Suave Shampoo. Plaintiff then posed, at the conclusion of the survey questions, the same "screening question" that was asked at the beginning of defendant's survey.
As is the case in most instances when surveys are introduced as evidence in litigation, each party has raised a multitude of objections and perceived flaws regarding its adversary's survey. [FN35] Indeed, there continue to be, as demonstrated by the conflicting testimony of Messrs. Kirsch and Lavidge, differences of opinion concerning particular aspects of survey design, methodology and administration, and the interpretation of survey results. Defendant has spent a considerable time in its brief attacking the validity of plaintiff's survey. Defendant has alleged that the sample universe was flawed due to adverse effects on the randomness of the survey; that since plaintiff's survey asked about only SUAVE products, the interviewers would know the entity that commissioned the survey thus ending in biased results; and that despite holding himself out as an expert, Mr. Lavidge adopted suggestions from plaintiff's attorney regarding the survey question.
*9 Plaintiff, in its reply brief, subsequently concentrated on attacking defendant's survey. While acknowledging the acceptability of the basic research procedure of defendant's survey (Lavidge, p. 39), plaintiff takes issue with defendant's questioning procedure. More specifically, as viewed by plaintiff, the principal flaw in defendant's survey resulting in bias was the "extensive and repetitive series of personal care product questions at the beginning of the surveys, which preconditioned respondents to give personal care product responses" (reply brief, p. 10.) Mr. Lavidge found that the conditioning of respondents to direct their attention to personal care products constituted an "overwhelming deficiency," thereby undermining the entire survey and resulting in a severe understatement of confusion as to the other products listed, including shoes. Plaintiff also asserts that the randomness of defendant's sample is flawed and that defendant's survey was not adequately validated in a timely fashion. Finally, plaintiff has questioned the qualifications of Dr. Kirsch as an expert in marketing and trademark surveys.
There is little doubt that, when compared to survey results considered as evidence in other cases involving likelihood of confusion, a 7.6 percent level of confusion is not very significant. Surveys disclosing likelihood of confusion ranging from 11 percent to 25 percent have been found significant. See 2 J.T. McCarthy, Trademarks and Unfair Competition, § 32:54 (2d ed. 1984), listing percentages as low as 11 percent as reliable support for a finding of likelihood of confusion, comparing, e.g., Henri's Food Products Co. v. Kraft Inc., 717 F.2d 352, 220 USPQ 386 (7th Cir.1983) [7.6 percent held persuasive of no likelihood of confusion]. [FN36]
Surveys are statistical evidence that can be an aid to the Board. One must keep in mind, however, that the survey evidence is only one factor to be considered in the overall determination of likelihood of confusion. We find both Messrs. Kirsch and Lavidge to be qualified as survey experts. In this case, both parties, with some merit, have perceived flaws in the other's survey, and we have weighed the survey results accordingly. We think that an argument can be made, as plaintiff has done, that defendant's screening question biased defendant's survey results in that respondents were already thinking in terms of personal care products (thus, more willing to say "yes" to confusion between such products but "no" as to other, nonpersonal care products) when the interviewer posed the crucial likelihood of confusion question. [FN37] Moreover, as Dr. Kirsch himself acknowledges, it would have been better to validate defendant's survey in a more thorough and timely fashion (although not fatal to defendant's survey).
Our skepticism about the reliability of the parties' surveys in this case is fueled by the wildly different results reached by each party, namely a confusion rate of 53 percent (plaintiff's) versus 7.6 percent (defendant's). While plaintiff has asserted that its survey utilizes "the same basic research procedure" (plaintiff's survey, p. 1), this wide disparity is not altogether unexpected given the perceived (and different) flaws in each survey. Thus, in this case at least, we have doubts on the probative value of defendant's survey to show no likelihood of confusion and plaintiff's survey in rebuttal thereto. [FN38]
*10 In view of our decision herein, defendant's motions to amend its application and registration are rendered moot. However, in the event defendant ultimately prevails in these proceedings, we now take up this additional matter. Defendant, on May 10, 1983, filed motions to amend its dates of first use as set forth in the application and registration. Defendant seeks to change its dates of first use to 1962 in the application and 1965 in the registration. The amendments are supported by a declaration of defendant's chairman of the board. When the motions were filed, plaintiff filed briefs in opposition thereto. The Board subsequently deferred action on the proposed amendments' until final hearing. Defendant, in its main brief on the case, renewed its motions to amend and plaintiff, in its reply brief, again objects to the proposed amendments. Plaintiff contends that the requested changes are inconsistent with the evidence submitted at trial and that the evidence falls short of being clear and convincing to support the earlier dates.
In the application, defendant alleged dates of first use of February 5, 1980. Defendant now asserts dates of first use of 1962 and has submitted, as evidence in support of such use, part of a shipping carton showing use of "SUAVE SHOE CORP." Regarding the registration, defendant alleged dates of first use of February 5, 1980, but now attempts to assert dates of 1965. In support thereof, defendant has submitted a shipping label showing "SUAVE SHOE CORPORATION" and design, followed by defendant's address.
We do not believe that the evidence supports the proposed amendment. The testimony adduced by defendant, in particular of Messrs. D. Egozi and Ramos, on this matter is inconclusive at best and, in part, is inconsistent with defendant's discovery responses (Int. No. 12). More significantly, however, the evidence relied upon by defendant in support of the amended dates does not show technical trademark use for purposes of registration. While a trade name can also function as a trademark and be registrable, the exhibits accompanying the D. Egozi declaration show "SUAVE" as part of defendant's trade name. The use on shipping cartons and labels is merely to identify the company selling the shoes and the likely impact of the designation on the average purchaser would be that of a trade name. See: In re Stewart Sandwiches International, Inc., 220 USPQ 93 (TTAB 1983) and cases cited therein.
Accordingly, the motions to amend are denied. [FN39]
We must determine the issue of likelihood of confusion in this case based on our opinion of that ultimate issue in the light of our conclusions regarding the relevant factors. In the case at bar, the factor weighing heavily in defendant's favor is the disparate nature of the goods bearing the mark. We believe, however, that this sole factor is outweighed by the cumulative weight of the other qualitative factors, especially the identity of the marks, the fame of plaintiff's mark, and the facts that the parties' goods, as identified, are impulse purchase items and are sold in the same channels of trade to the same class of purchasers. We concede that defendant's survey results, coupled with the different nature of the goods, raises a doubt as to our holding. Nonetheless, as often stated, we must resolve any doubt in favor of the prior user and against the newcomer. On balance, the factors, when weighed accordingly, are in favor of plaintiff. We are accordingly persuaded that customers familiar with plaintiff's personal care products bearing the SUAVE mark would, upon encountering defendant's SUAVE marks for shoes, be likely to believe that the respective goods were manufactured by the same entity or that they were associated with or sponsored by the same producer.
*11 Decision: The opposition is sustained and registration to applicant is refused. The petition for cancellation is granted and Registration No. 1,169,440 will be cancelled in due course.
J. D. Sams
R. L. Simms
T. J. Quinn
FN1. The Board, on March 10, 1983, approved the parties' stipulation to consolidate, thereby allowing the parties to present the opposition and cancellation proceedings on the same record and briefs.
FN2. Application Serial No. 250,892, filed February 20, 1980, alleging dates of first use of February 5, 1980.
FN3. Registration No. 1,169,440, issued September 15, 1981; Section 8 affidavit accepted.
FN4. Registration No. 613,664, issued October 4, 1955; renewed. The registered mark is in stylized form.
FN5. Registration No. 885,185, issued January 27, 1970; combined Sections 8 and 15 affidavit accepted.
FN6. Registration No. 1,073,444, issued September 20, 1977; combined Sections 8 and 15 affidavit accepted.
FN8. Gilbert P. Smith (February 26, 1985).
FN9. Laura Giorgolo (March 8, 1985).
FN10. See note (7), supra. Pursuant to stipulation, the parties agreed that defendant could introduce the testimony of these five individuals by filing a notice of reliance on portions of their discovery depositions, in lieu of noticing and taking their testimony depositions.
FN11. William Mayer (November 22, 1985); Christy L. Todd (January 21, 1986); and Arthur Kirsch, Ph.D. (July 16, 1985).
FN12. Laura Giorgolo (May 30, 1986).
FN13. Alan Wainberg (March 1, 1983); David Egozi (March 2, 1983); Eugene Ramos (March 2, 1983); and Max Leichy (March 2, 1983). Defendant, on March 17, 1986, filed a motion to strike page 36, lines 4-18 of the Wainberg deposition, relied upon by plaintiff in its notice of reliance filed March 5, 1986. For the reasons set forth by defendant, the motion is well taken. Moreover, plaintiff did not object to the motion. See: Trademark Rule 2.127(a). Accordingly, the motion to strike is granted and this portion of the testimony has not been considered.
FN14. Robert J. Lavidge (May 28, 1986).
FN15. Arthur Kirsch, Ph.D. (February 29, 1984).
FN16. Plaintiff's exhibit 59, introduced under seal, represents plaintiff's advertising and promotional expenditures since 1974 for its products sold in the United States under the SUAVE mark.
FN17. While number one in terms of units sold, Mr. Smith has testified that the shampoos and conditioners rank second in terms of dollars.
FN18. Plaintiff's exhibit 53 represents dollar figures for sales of products bearing the SUAVE mark. This exhibit was introduced under seal. Suffice it to say that the figures reported show very impressive sales over the years, totaling in the hundreds of millions of dollars.
FN20. The testimony shows that defendant, through other divisions, also imports shoes, manufactures women's sweaters and knit sportswear, and is a retailer of shoes in Florida. Mr. Wainberg indicates that the mark SUAVE is basically used by the Manufacturing Division which manufactures shoes only.
FN21. A "jobber" is defined as "a wholesale merchant, especially one selling to retailers." The Random House College Dictionary, p. 720 (1980). A "rack jobber", as described by Mr. Wainberg, is "an individual or a company that would buy the merchandise and put it on the racks in the store." (p. 25).
FN22. Defendant has used its SUAVE marks on the tongues and soles of sample shoes shown to customers by salesmen and at shoe trade shows; there are, however, no sales of shoes bearing the marks in the United States.
FN23. As noted above, plaintiff's sales and advertising figures have been made of record under seal. A review of the documents relative thereto shows very large numbers in both categories.
FN24. Despite this fame, plaintiff has indicated that it neither has licensed nor intends to license its mark in the United States for products other than personal care products. Plaintiff does state, however, that it has not ruled out the possibility of licensing its SUAVE mark.
FN25. There is no issue of any bad intent on the part of defendant in its adoption of its marks. Defendant adopted its SUAVE marks because the word "Suave", as viewed by defendant, "meant softness and we wanted to make a shoe which gives the softness appeal of a soft shoe". (D. Egozi, p. 4). Two of defendant's officers stated that they first became aware of plaintiff's mark in approximately 1980 when they independently saw a television commercial for one of plaintiff's products. There apparently was no discussion, either at the time of adoption or upon seeing the commercial, about plaintiff's use of the SUAVE mark.
FN26. The Board, with respect to evidence of third-party use, has stated:
The usual justification for our close attention to this kind of evidence is the belief that the presence of common elements in marks extensively used by persons and firms unrelated as to source may cause purchasers to not rely upon such elements as source indicators but to look to other elements as means of distinguishing the source of the goods. [citations omitted]
Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1462 (TTAB 1987).
FN27. One registration (now cancelled) is for the mark EXPLOSION II registered to Suave Fashions, Inc., and two of the other registrations are for marks other than SUAVE as well, namely SUAVAIR and SUAVITY. Moreover, two of the registrations cover goods such as "bread" and "snuff", that is, goods totally unrelated to the goods involved in this case. These registrations obviously are irrelevant. See: J. David Sams, Third Party Registrations in TTAB Proceedings, 72 TMR 297, 298 (1982).
FN28. Plaintiff is reaching when it claims that defendant's assertion of no actual confusion is inaccurate. Plaintiff refers to Mr. Wainberg's testimony that when he mentions to others his employment with "Suave", people will sometimes mention "SUAVE cosmetics." He recounts one instance when he gave his employment as "Suave", and the response was "Ah, Suave shampoo." (Wainberg, p. 57-58). Such evidence hardly can be categorized as probative evidence of actual confusion, but rather goes to the high recognition of plaintiff's mark.
FN29. There is nothing to preclude defendant from in the future applying its SUAVE mark directly to the goods or on containers as seen by the ultimate consumer. We note defendant's use overseas of SUAVE directly on shoes and, while defendant discounts the possibility, such use might in the future take place in this country. Moreover, while no shoes bearing the SUAVE mark are sold in this country, applicant owns and operates its own retail shoe stores in Florida.
FN30. The parties debated at length about the typical layouts of discount stores and whether goods such as personal care products and shoes are displayed in the same area of such stores. The Board recognizes that there is a widely diversified line of products sold in retail chains such as those in which the respective goods of the parties would be sold. It follows that products such as those involved here probably would appear in different parts of the store. This fact alone, however, does not gainsay a likelihood of confusion. See: In re Cosmetically Yours, Inc., 171 USPQ 563, 565 (TTAB 1971). The crucial question here is whether source confusion is likely. As to that, whether or not the goods are displayed close together or far apart in the same store is immaterial.
FN31. The PALISADES question was posed to ascertain a "noise factor" in the survey. Dr. Kirsch testified that this "noise" question allowed an estimate of the respondents "who wanted to say yes". (Kirsch testimony, p. 143). In the survey document at page 5 under "Survey Methodology", it was explained as follows:
The fictitious Palisades trademark was included to give a base line estimate of those respondents who did not understand the questions or did not answer thoughtfully, and an estimate of those persons that think that any company might make any product if the trademark were the same. [emphasis in original]
FN32. When REVLON and PALISADES were used, the goods in the question were listed as shampoo and face (and body) powder.
FN33. Defendant, on June 10, 1986, filed a motion to strike the rebuttal testimony of Robert Lavidge, including, of course, the survey. The Board, on April 14, 1987, denied the motion but ordered that plaintiff produce Mr. Lavidge for further cross-examination if defendant so desired (but no further testimony was taken of Mr. Lavidge). A request for reconsideration subsequently was denied. With respect to the motion to strike based on defendant's claim that the testimony constituted improper rebuttal, the Board deferred ruling thereon until final hearing. Defendant has renewed its motion to exclude the Lavidge testimony and the survey (plaintiff's exhibit 62).
We find that the Lavidge testimony and survey constitute proper rebuttal to the extent that they bear on the validity and probative value of defendant's survey. Thus, we have considered plaintiff's rebuttal testimony and survey to that extent. While it is a fine line to draw, we have not considered the survey for the purpose of supporting plaintiff's case-in-chief on its claim of likelihood of confusion.
Moreover, our review of the Attorney Examiner's thorough ruling on defendant's prior motion does not persuade us that any error was made in that decision.
FN34. Plaintiff has pointed to portions of the Kirsch testimony to support the proposition that changes in the ordering of the product sequence would not affect the survey results in any significant way.
FN35. J.T. McCarthy, in his treatise on trademarks, comments:
It is notoriously easy for one survey expert to appear to tear apart the methodology of a survey taken by another. However, one must keep in mind that there is no such thing as a "perfect" survey.... Like any scientific method related to statistics in the social sciences, every survey, no matter how carefully constructed and conducted, has some potential flaws somewhere.
2 J.T. McCarthy, Trademarks and Unfair Competition, § 32:50 (2d ed. 1984).
FN36. As observed by the Board in the past, percentages may be deceiving since the probative value of results must be considered in light of an evaluation of the survey itself. See: Miles Laboratories Inc., supra at 1457.
FN37. We question, in any event, the need for a "screening question" like that used by the parties in this case. It is a virtual certainty that a telephone respondent to the parties' survey would have used at least one of the personal care products listed (see defendant's study showing only 9 out of 1285 persons contacted did not use any of the products).
FN38. For example, as observed by defendant, it is puzzling that more people were confused between SUAVE shoes and SUAVE shampoo (53%) than between SUAVE shoes and SUAVE men's sports jackets (30%). It leads us to believe that something else is at work, other than likelihood of confusion, in plaintiff's survey. Most likely that "something else" is the very high recognition awareness of SUAVE shampoo. When viewed in that light, plaintiff's survey, even if introduced during plaintiff's case-in-chief and, thus, admissible evidence to show likelihood of confusion (which it clearly is not), is less persuasive on that issue.
Inasmuch as the surveys of both parties concern the word mark SUAVE only, the results, of course, do not go to confusion between plaintiff's mark and the registered word and design mark of defendant.
FN39. At the oral argument plaintiff's counsel alleged, in essence, that there was no technical trademark use prior to the filings of defendant's applications and, thus, the applications were void ab initio. While we believe that the record raises a question as to defendant's use of its marks in a technical trademark sense prior to the filings for purposes of registration, this issue was not pleaded by plaintiff nor was it raised in plaintiff's main brief on the case. Moreover, on the record, we cannot conclude that this specific issue (i.e., any technical trademark use prior to filing) was tried, either by express or implied consent of the parties, under Fed.R.Civ.P. 15(b). Accordingly, no consideration has been given to this allegation.