Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 LABORATOIRES DU DR. N.G. PAYOT ETABLISSEMENT
SOUTHWESTERN CLASSICS COLLECTION, LTD.
[No Docket Number]
July 9, 1987
Hearing: April 7, 1987
Opposition No. 68,647 to application Serial No. 347,832 filed January 29, 1982.
Peter F. Felfe, Marius J. Jason and Felfe & Lynch for Laboratoires du Dr. N.G. Payot Etablissement
Jessel Rothman, P.C. for Southwestern Classics Collection, Ltd.
Opinion by Krugman
An application has been filed by Southwestern Classics Collection Ltd. to register PEYOTE as a trademark for men's cologne. [FN1]
Registration has been opposed by Laboratoires Du Dr. N.G. Payot Etablissement. As grounds for opposition, opposer asserts that applicant's mark so resembles opposer's previously used and registered marks DR. N.G. PAYOT (stylized) for perfume, skin lotions, skin creams, makeup and preparations for hair, hands and face; toilet waters, rice powder, rouges, lipsticks, powder retaining cream, massage cream, face powder, eau de cologne and brilliantine [FN2] and PAYOT for foundation makeup, face powders, eye makeup, namely, underline concealer, mascara, eye shader, eyebrow pencils, eyeliner pencils, pencil sharpener for eyebrow and eyeliner pencils, eye coloring pencils, lip and cheek pencils, lipsticks, lip gloss, lip liner, skin lotions, creams and cleansers [FN3] as to be likely, when applied to applicant's goods, to cause confusion, mistake or to deceive.
The record consists of the pleadings, the file of applicant's application, opposer's pleaded registrations made of record pursuant to a notice of reliance, a number of applicant's responses to discovery requests propounded by and relied on by opposer, certain official records of the Patent and Trademark Office relied on by opposer and testimony (and exhibits) taken by both parties. [FN4] Both parties have filed briefs on the case and opposer has filed a reply brief. An oral hearing was held before this panel.
Before turning to the pleaded issue of likelihood of confusion, we must determine whether the unpleaded issue of whether applicant used the mark sought to be registered (either in the composite form as published or the word PEYOTE by itself) at the time the application was filed was, in fact, tried by the express or implied consent of the parties. [FN5] If we determine that this issue was, in fact, litigated, and determine that applicant had not used the mark at the time the application was filed, the application must be held void ab initio regardless of our determination of the question of likelihood of confusion.
It is clear from applicant's position in this case that the question of applicant's use of the mark as of the application filing date was not tried by the express consent of the parties. In support of opposer's position that this issue was tried by the implied consent of the parties, opposer asserts that applicant, subsequent to the close of the discovery period, responded to opposer's discovery requests; that these responses evidenced that no use of the mark sufficient to support a trademark application took place prior to the application filing date; that opposer, during its testimony period, filed a notice of reliance on applicant's answers to these discovery requests, thus giving notice to applicant that opposer intended to rely on this material. Opposer further asserts that applicant, during its testimony period, took the deposition of its president, George Alpert; that this witness testified on direct examination as to the nonuse of the mark prior to the application filing date; that this issue was further explored on cross-examination by opposer without any objection from counsel for applicant; that the issue of applicant's use of the mark at the time of the filing of the application was clearly an issue in this case and that no objection on the grounds of prejudice or unfair surprise was or could have been made by applicant.
*2 It is applicant's position, on the other hand, that its answers to the discovery requests and the questions asked at the Alpert deposition were not directed to the question of applicant's first use but, rather, to applicant's first commercial sale; that these questions did not reasonably put applicant on notice that opposer desired to try the issue of first use; that the first time applicant had actual notice that opposer was seeking to raise the issue of first use was when opposer moved for summary judgment on April 12, 1985; [FN6] that after this motion was denied on May 9, 1985, opposer took no further action until it filed its brief on January 10, 1986, at which time it filed a motion to amend the opposition and that applicant never expressly or impliedly consented to a trial of the issue of first use. Applicant further asserts that opposer had approximately six months in which to amend its opposition to raise the issue of first use from the time opposer received applicant's answers to opposer's discovery requests until the taking of the Alpert deposition; that opposer did not attempt to amend its opposition during this time and this failure to do so has resulted in severe prejudice to applicant; that had applicant been apprised of opposer's intention to raise the issue of first use, applicant would have again deposed Mr. Alpert on the issue of first use, as opposed to first commercial use, and applicant would have deposed the individual whose firm received the original package on which applicant's mark appeared on October 22, 1981, wherein said individual would have had an opportunity to testify as to the circumstances surrounding the October 22, 1981 shipment.
After reviewing the record and the positions of the parties with respect to the question of applicant's first use of its mark, we are convinced that applicant had fair notice of this issue and that applicant is neither unfairly surprised nor prejudiced by consideration of said issue. In response to opposer's interrogatories, applicant indicated, inter alia, that the product that will (emphasis added) be sold in the United States bearing the mark PEYOTE is a men's cologne and an after shave lotion (answer to Int. No. 1); that goods bearing the mark PEYOTE were first offered for sale on May 23, 1984 [FN7] (answer to Int. 2(a)); that applicant will (emphasis added) be the manufacturer of the products sold under the mark at issue (answer to Int. 6); that the channels of trade through which applicant's products bearing the mark PEYOTE will (emphasis added) reach the ultimate consumer will be through chain stores, drug stores and other retail establishments (answer to Int. 7); that applicant will (emphasis added) be the sole distributor of the product sold under the mark at issue (answer to Int. 8(a)) and that the products will (emphasis added) be sold throughout the United States (answer to Int. 17). The answers to the foregoing discovery requests were made part of a notice of reliance by opposer during opposer's testimony period. The indication by applicant that its first offer for sale of goods under the PEYOTE trademark was May 23, 1984, over two years after the filing date of applicant's application, together with applicant's repeated responses to discovery requests that the mark will be sold and will be distributed through drug stores etc., thus suggesting no present use of the mark on any product, is sufficient, in our view, to raise the issue of first use of applicant's mark and apprise applicant that this issue was being litigated.
Q. . . . Can you name the customers other than the ultimate consumer for the products bearing the trade name PEYOTE for the following years? 1982?
The deponent subsequently identified copies of two advertisements that appeared in 1984 in Penthouse and Phoenix magazines and the direct examination continued as follows:
Q. What magazine will this advertising appear in in the future?
A. As of this moment there are no immediate plans for any further magazine advertising. After developing the product and the package for well over two years, 1984 became a year for test marketing and for the introduction of the product into the market. . . .
On cross-examination, counsel for opposer took up on the line of questions relating to opposer's first use of the PEYOTE mark as follows:
Q. You testified as to your sales figures. You testified that there were no sales in 1982; is that correct?
Q. There were no sales in 1983; is that correct?
Q. Your first sales were in 1984; is that correct?
Q. So prior to 1984, no PEYOTE cologne was sold to a customer; is that correct?
A. That's correct. During that period it was not sold to a customer. During that period it was developed, package was designed, fragrance was developed, marketing plans were made. It was shown to some potential customers to see if what we were anticipating as a package, as a product, would be acceptable. and '81, '82 and '83 were development years that preceded a test product introduction to see if our marketing plans were correct.
A number of sales invoices were then identified as an exhibit and with respect to invoice no. 1001, the following testimony was elicited:
Q. The first invoice is numbered 1001. Is that your first sales invoice?
A. Probably, yes.
Q. Invoice Number 1001 is dated May 23rd, 1984. It indicates that PEYOTE aftershave and PEYOTE cologne was sold to Long's Drug in Scottsdale, Arizona. Is Long's Drug the first customer for your PEYOTE aftershave and PEYOTE cologne?
A. It could have been.
Q. You said they could have been?
A. They are. They are.
Q. They are?
Q. Therefore, is it correct to say that May 23rd, 1984, was the date that you first shipped PEYOTE aftershave and PEYOTE cologne to a customer?
A. To that class of trade. The product was actually manufactured in '83. The marketing began in '84. There may have been some product shipped towards the end of '83 in the form of samples to potential customers to get reactions . . . .
Q. Therefore, is it correct to say that no shipments of PEYOTE cologne were made earlier than 1983?
*4 A. That would be correct.
Q. Okay. So there were no shipments or sales of PEYOTE cologne or PEYOTE aftershave prior to 1983?
Q. Is that correct?
We have no doubt from the foregoing testimony that the issue of applicant's first use of the PEYOTE trademark on the goods recited in applicant's application was clearly being litigated by the parties herein and applicant's protestations to the contrary are simply unpersuasive. Applicant's counsel did not object at all to the foregoing cross-examination as to applicant's first use of PEYOTE. In fact, applicant's counsel not only did not object to the cross-examination on this question, but, during the cross examination, counsel for applicant actually attempted to clarify a matter relating to the specimens of record in applicant's application and elicited the testimony from Mr. Alpert that the specimens were mock-up boxes and were not actual containers in which the goods were shipped.
From the foregoing answers to discovery requests made of record and from the direct and cross examination of Mr. Alpert, it is simply not credible that applicant was apprised of the issue of its first use of PEYOTE cologne only at the time opposer filed its untimely motion for summary judgment and that applicant was led into a false sense of security when opposer did not file a motion to amend the opposition until opposer filed its brief, a time several months after the Board's denial of the summary judgment motion. We find that the issue of first use of PEYOTE was clearly tried by the implied consent of the parties. See: CPC International, Inc. v. Seven-Up Co., 218 USPQ 379 ('TTAB 1983). As stated in Rule 15(b) FRCP, where unpleaded issues are tried by the express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings. Such amendment of the pleadings as may be necessary to cause them to conform to the evidence and to raise these issues may be made upon motion of any party at any time, even after judgment; but failure so to amend does not affect the result of the trial of these issues.
In the present case, then, the delay of opposer in moving to amend until such time as opposer filed its brief on the case is irrelevant in view of our conclusion that the issue raised by the amendment was, in fact, tried by the parties. Accordingly, opposer's motion to amend is granted and the amended opposition is substituted for the original opposition. Moreover, applicant's motion to bar certain answers to discovery requests relied on by opposer and to bar portions of the Alpert deposition is denied.
We now turn to the merits of the issue of applicant's first use of PEYOTE in connection with the recited goods. In this regard, the testimony of Mr. Alpert unequivocally indicates that no commercial sales of any cologne bearing the PEYOTE mark occurred prior to 1984. Mr. Alpert testified that the product was manufactured in 1983 and some product may have been shipped towards the end of 1983 in the form of samples to potential customers to get their reactions. Prior to the application filing date, the record shows that on October 22, 1981 (the date of first use alleged in the application), applicant sent a sample of the packaging for the PEYOTE cologne and aftershave to one Harvey Ross of Arlington Industries, Inc., a potential customer, in an attempt to get Mr. Ross's reaction to the packaging and to get a commitment from him to purchase a quantity of the product sometime in the future. Mr. Ross acknowledged the receipt of sample packaging and, in a letter dated October 30, 1981, indicated that he awaited the fragrance samples. It is clear from the record that no fragrance was sent to Mr. Ross along with the sample packaging on October 22, 1981. Mr. Alpert was unsure when any sample product was sent to Mr. Ross and it is unclear if any sample fragrance was ever sent, in view of Mr. Alpert's other testimony that the earliest sample shipments of PEYOTE cologne were not made until 1983.
*5 The Alpert testimony further indicates that packaging designs for the product were not finalized until approximately February 1983 and that the specimens of record were mock-up or dummy boxes which were modified by subsequent designs. In approximately June 1983, the final packaging designs were sent to a box company to be manufactured and sometime after that, the boxes were shipped to Beco Chemical Company which subsequently proceeded to manufacture the fragrance, bottle the fragrance, put the bottles into the packages and ship the packages.
?? particular trade. See: Times Mirror Magazines, supra, and cases cited therein.
In the present case, it is applicant's position that its October 22, 1981 shipment to Mr. Ross was a token use of the mark; that the subsequent delay in commercially producing the product is not unusual in the fragrance business and that applicant, during that period, was taking the necessary steps to prepare for the production and sale of PEYOTE cologne. The problem with applicant's analysis is that the record clearly shows that the October 22, 1981 shipment was not a shipment of any goods but, rather, simply a shipment of sample packaging. In point of fact, the record shows that at the time the October 22, 1981 shipment of the sample packaging took place, there was not even any product in existence and that the final fragrance was not even developed until long after the application was filed. Applicant argues that packaging bearing the mark need not accompany the goods transported through commerce, citing Aluminum Fabricating Co. v. Season-All Window Corp., 160 F. Supp. 41, 116 USPQ 335 (S.D.N.Y. 1957), aff'd, 259 F.2d 314, 119 USPQ 61 (2nd Cir. 1958) and In re Castleton China, Inc., 156 USPQ 691 (TTAB 1968). However, the Court, in the Aluminum Fabricating Co. case specifically found that plaintiff, prior to its application for registration, used the mark on displays associated with the goods and that the goods were sold or transported in commerce. The Castleton China case noted that point-of-sale displays associated with the goods need not accompany the goods in commerce although the Board specifically held that the particular specimens involved in the case were not displays associated with the goods. While it may be true, as applicant states, that certain displays associated with the goods need not accompany the goods transported through commerce, to conclude from that premise that a shipment of packaging but no shipment of goods constitutes a bona fide use of a mark in commerce stands logic and common sense on their respective heads. Such a conclusion is clearly baseless and without any support.
Under the circumstances, we conclude that at the time the application was filed, the mark PEYOTE either in the word format or in the design format, had not been used on any goods either in commerce or anywhere and that, regardless of our determination of the likelihood of confusion issue, the opposition must be sustained as to this ground and registration to applicant refused since the application is deemed void ab initio.
*6 With respect to the issue of likelihood of confusion, opposer has established superior rights in the PAYOT mark by virtue of its pleaded registration made of record herein as well as through competent testimony. Turning first to the respective goods, applicant's goods comprise men's cologne while the goods covered by opposer's registrations encompass a variety of personal care and cosmetic products, including perfume, skin lotions, skin creams, powders, eye makeup products, lip products and cologne. While cologne is covered by opposer's DR. N.G. PAYOT (stylized) registration and there is no indication that the mark PAYOT per se is used on cologne, opposer has shown use of PAYOT per se in connection with a variety of creams and lotions used for the enhancement of one's personal appearance. While there is nothing to preclude men from using some of opposer's cosmetic products, we are satisfied that even conceding that opposer's PAYOT products are made for, marketed to and used by women, men's cologne is sufficiently related to the cosmetic products sold by opposer such that confusion is likely where those products are sold under the same or similar trademarks. The record shows that men's and women's toiletry products are advertised together, travel through the same trade channels and that both men's and women's toiletry products often emanate from the same producer and are sold under identical trademarks. Accordingly, the only question to be determined is whether opposer's mark so resembles applicant's mark that their use in connection with related toiletry and cosmetic products would be likely to cause confusion as to source or sponsorship for purposes of Section 2(d) of the Trademark Act.
With respect to the marks, both opposer and applicant have expended a great deal of resources attempting to show how PAYOT and PEYOTE may be pronounced. Applicant took the testimony of Marie-Claude Hays-Merlaud, a college teacher of French, concerning the pronunciation of these terms and opposer, during its rebuttal testimony period, took the testimony deposition of John Mann, a marketing executive. While applicant is correct in its objections to this rebuttal deposition on the ground that the deponent had no qualifications to testify on the matter of the correct pronunciation of the marks in question, the fact remains that the Hays-Merlaud testimony is, similarly, of little or no value to the resolution of the similarity of the marks. It has been repeatedly stated that there is no such thing as a correct or proper pronunciation of a trademark. See: Yamaha International Corp. v. Stevenson, 196 USPQ 701 (TTAB 1977); E.I. duPont de Nemours & Co. v. Big Chief S.A., 189 USPQ 358 (TTAB 1975) and Jules Berman & Assoc. v. Consolidated Distilled Products, 202 USPQ 67 (TTAB 1979) and cases cited therein. While PEYOTE and PAYOT are susceptible of a number of pronunciations which would result in the marks' being phonetically distinguishable, we are constrained to acknowledge that the possibility exists that some purchasers might be inclined to pronounce PAYOT and PEYOTE in a way that results in the marks' sounding very similar. However, notwithstanding this possibility of the marks' being capable of similar pronunciations, the fact remains that PEYOTE is an ordinary word found in the dictionary. Peyote, in its ordinary sense, refers to any of several cacti found in the southwestern United States and northern Mexico, especially mescal, and also refers to a stimulant drug derived from mescal and used in religious ceremonials by some Indian peoples. (Webster's Third New International Dictionary (1976)). The term tends to suggest a southwestern United States and/or American Indian connotation and this connotation is further enhanced in the form of applicant's mark as published with a depiction of a person in traditional American Indian dress. The term also tends to suggest the drug, peyote, connoting a euphoric, heady concept as applied to men's cologne. The term PAYOT, by contrast, has no ordinary meaning and its only significance to purchasers would be that of a French-sounding term. In point of fact, the word Payot is the surname (or pseudonym) of Dr. N.G. Payot, a French dermatologist who created the line of cosmetic products sold by opposer. We believe that the existence of one mark consisting of an ordinary word having a particular connotation, contrasted with an unfamiliar term having a quite different connotation, results in the marks' being sufficiently distinguishable, when compared in their entireties, despite any technical similarities in possible pronunciations of the respective terms. We remain convinced that the familiar is readily distinguishable from the unfamiliar and we note a line of decisions recognizing the distinction between common and uncommon terms used as trademarks. See: Jacobs v. International Multifoods Corp. 668 F.2d 1234, 212 USPQ 641 (CCPA 1982) (no likelihood of confusion from use of BOSTON SEA PARTY for restaurant services and BOSTON TEA PARTY for tea) and cases cited therein; In re General Electric Co., 304 F.2d 688, 134 USPQ 190 (CCPA 1962) (no likelihood of confusion from use of VULKENE for electrical wires and cables and VULCAN for electrical building wires).
*7 Accordingly, in view of the foregoing, while we acknowledge the possibility of confusion as to source or sponsorship from the contemporaneous use of the PEYOTE and PAYOT on related personal care products, we do not believe that such confusion is likely. Moreover, we find the design form of applicant's mark with a depiction of an Indian figure even further removed from opposer's PAYOT mark.
Decision: The opposition is sustained and registration to applicant is refused solely on the ground that applicant's mark, either in the design form as published or the word PEYOTE, per se, was not in use on or in connection with the recited goods at the time the application was filed. The application, therefore, is void ab initio.
J. D. Sams
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 347,832 filed January 29, 1982. Applicant initially filed this application to register PEYOTE COLOGNE and design in the form depicted below.
The Examining Attorney, in an Office action mailed August 19, 1982, stated that applicant's mark was simply the word PEYOTE and required that applicant submit a new drawing showing PEYOTE typed in upper case letters. This requirement was eventually complied with by applicant. However, due to an inadvertence, the PEYOTE COLOGNE and design mark was published for opposition, rather than the mark PEYOTE per se. This opposition ensued. As noted at the oral hearing held before this panel, both opposer and applicant wish to resolve the issues of likelihood of confusion vis-a-vis the word mark PEYOTE as well as the published mark PEYOTE COLOGNE and design since both sides have litigated this issue with respect to the word mark PEYOTE. The Board agrees that since this case has been litigated on the issue of likelihood of confusion insofar as it relates to the word mark PEYOTE, we will decide this issue herein. However, as explained to the parties at the oral hearing, in the event applicant ultimately prevails in this opposition, the word PEYOTE must be republished for opposition.
FN2. Registration No. 443,780 issued February 28, 1950. Renewed.
FN3. Registration No. 1,219,602 issued December 14, 1982 pursuant to Section 2(f) of the Trademark Act.
FN4. Applicant moved to bar admission into evidence of certain portions of the testimony of its own witness, George Alpert as well as portions of its answers to discovery requests relied on by opposer herein. In addition, applicant also moved to bar the admission of the Patent and Trademark Office official records relied on by opposer during opposer's rebuttal testimony period and to bar the admission of the testimony deposition of John Mann taken by opposer during its rebuttal testimony period. The Board refused to bar the evidence objected to but, rather, indicated that it would determine the validity of the objections at final hearing. The Board has now, of course, reviewed the entire record; the probative value, if any, of the material objected to has been determined and, to the extent deemed necessary, these matters will be discussed in this opinion.
FN5. Opposer, on January 10, 1986, filed its brief on the case together with a motion to amend the opposition to raise the issue that applicant's application was void ab initio for the reason that the mark was not used prior to the application filing date. The Board, in a ruling dated January 31, 1986, stated that where issues not raised by the pleadings are tried by the express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings. The Board then deferred ruling on the motion to amend until final hearing.
FN6. This motion, filed after the close of both opposer's and applicant's testimony periods, was denied on the grounds of untimeliness and for the reason that the motion was based on an unpleaded issue. The Board indicated, however, that if opposer was of the view that the unpleaded issue was tried by the express or implied consent of the parties, it could file a motion to amend under Rule 15(b) FRCP and such a motion would be considered at final hearing. Opposer thereafter filed its motion to amend.
FN7. The filing date of applicant's application was January 29, 1982. See f.n. 1, supra.