Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ROGER & GALLET S.A.
VENICE TRADING CO., INC.
February 3, 1987
Hearing: September 17, 1986
Opposition No. 69,575 to application Serial No. 436,455 filed July 27, 1983
Gerard J. Weiser, Gary M. Cohen and Barbara V. Maurer for Roger & Gallet S.A.
Harry L. Shniderman, Margaret R. Alexander, Bingham B. Leverich, James A. Toupin and Carol Fortine of Covington & Burling; and Richard A. Brown, Jr. and John R. Ellingson of Howser, Gertner & Brown for Venice Trading Co., Inc.
Opinion by Sams
Venice Trading Co., Inc. has filed an application to register its mark 'DINAX' for a 'cosmetic product for hair--namely, setting and styling gel.' [FN1] Roger & Gallet S.A. has opposed registration of applicant's mark, under Section 2(d) of the Trademark Act, on the grounds that 'DINAX,' when applied to the goods described in the application, so resembles opposer's previously used and registered mark 'TENAX,' for essentially the same goods, that confusion as to source is likely. Opposer pleaded ownership of registrations for the mark 'TENAX' for 'paste for beautifying and preserving hair' [FN2] and the mark shown below for 'fixative for hair.' [FN3]
The record consists of copies of opposer's pleaded registrations, applicant's answers to certain interrogatories posed by opposer (offered by opposer under notice of reliance), a copy of the registration file for opposer's pleaded Registration No. 1,303,370 (offered by applicant under notice of reliance), excerpts from certain printed publications (offered by applicant under notice of reliance), opposer's answers to certain of applicant's interrogatories (and exhibits) (offered by applicant under notice of reliance), and two testimony depositions (one filed by each party).
Opposer offered the testimony deposition of Richard M. Burston, president of Excalibur, Inc. [Excalibur], a corporation licensed by opposer to distribute 'TENAX' products in the United States. The witness testified that he had been involved in the hair care business since 1953, that he had been familiar with the 'TENAX' mark for many years, and that he came into direct contact with the mark when a company with which he was associated in 1978 or 1979 was asked to distribute 'TENAX' hair fixatives. Excalibur was formed in 1981 and became the national distributor for 'TENAX' products.
Burston testified that the 'TENAX' product line includes conditioning rinses, hair fixatives, shampoo, a styling product in liquid form, and a hair mousse. The witness testified that Excalibur sells to (1) wholesalers, who resell to beauty salons, some of which again resell the products to beauty salon customers, (2) drugstores, drugstore chains, and drug wholesalers, and (3) food chain retailers. The 'TENAX' products are sold to the professional trade through manufacturers' representatives who operate in various geographic areas of the United States. There is also mail order business. At the retail level, the products are sold in that section of the retail store devoted to hair care products.
*2 Excalibur's advertising expenditures for the 'TENAX' product, during the period 1981 to 1985, were more than $1,000,000, of which total $300,000 was spent in advertising to the professional trade. Beginning in about 1985, Excalibur began to market the 'TENAX' products more extensively in retail trade channels and, in conjunction with this effort, some $750,000 was spent in 1985 on advertising directed to the retail customer. Specifically, full color advertising was placed in several consumer market magazines, including Cosmopolitan, Vogue, Glamour, Self, Seventeen, and Madamoiselle.
In conjunction with the Burston deposition, opposer offered exhibits showing advertisements for its 'TENAX' products. Among these exhibits are copies of advertisements for the 'TENAX' products that have appeared in magazines directed to the beauty salon trade (including American Hairdresser Salon Owner (January 1983), American Hairdresser Salon Owner (February 1983), and American Salon Eighty-Four (January 1984)). These advertisements show reproductions of packaging for 'TENAX' products. That packaging includes the 'TENAX' mark, a striped packaging design, and various color combinations. The earliest advertisement of record showing the 'TENAX' mark used on a purple package was an advertisement from January 1984 in American Salon Eighty-Four. The copy of this advertisement was placed in the record by applicant.
Applicant offered the testimony deposition of Lorel Ungureanu, applicant's president and sales manager since 1981. Ungureanu testified that the first interstate sales of products bearing the 'DINAX' mark were in February 1983. The witness testified that the first interstate shipment was in packaging which has remained the same since that first shipment--namely, the trademark 'DINAX,' striped motif, and the color purple. Applicant's witness testified that 'DINAX' products are sold only to beauty distributors and then, in turn, to beauty salons. Applicant offered copies of advertisements showing its 'DINAX' products in purple packaging. These advertisements appeared in the March and April 1983 issues of Modern Salon magazine.
Ungureanu testified that the mark 'DINAX' was derived from the trademark for an 'older product.' Specifically, he testified that his wife and her sister, Mrs. Claudio Bonazza, wife of a shareholder in applicant corporation, had used their given names, 'Dina' and 'Meri,' as a trademark in connection with beauty salons they operated in Italy (i.e., 'DINA-MERI'). The 'DINAX' mark was allegedly created by taking Mr. Bonazza's wife's name, 'Dina,' and adding the letter 'X' to represent 'excellence' or 'an excellent product.' Ungureanu testified that he was 'probably' aware of the 'TENAX' mark when the 'DINAX' mark was selected, in that he was familiar with the beauty industry, and 'TENAX' products were being stocked in beauty salons at the time.
Applicant also made of record a copy of a document offered by opposer in answer to an interrogatory asking for early uses of the mark 'TENAX' in the United States. The document furnished in conjunction with the answer to that interrogatory is incomplete but shows reference to 'TENAX' and shows, in addition, the words 'The Tenacious' below the mark 'TENAX'. Applicant offered this documentary evidence to support its argument that 'TENAX' has a different connotation (i.e., 'tenacious') than does 'DINAX.'
*3 Priority of use is not an issue in this proceeding, in view of opposer's proof of ownership of two prior registrations of its mark 'TENAX' and 'TENAX' (and design). Nor is there any real dispute that both parties use their marks on essentially the same sort of hair care products. Applicant's argument that 'DINAX' products are sold only on a wholesale basis to sophisticated professional beauty distributors is without merit, because there is no limitation in its recitation of goods which in any way limits the channels of trade for its products to the professional market. It is that recitation that must be considered in deciding likelihood of confusion. Fort Howard Paper Co. v. Marcal Paper Mills, Inc., 189 USPQ 305 (TTAB 1975) (and cases cited there). Moreover, since the product would be used in beauty shops, customers could well be exposed to the 'DINAX' mark even if applicant's products were limited to the beauty salon market.
The evidence of record establishes to our satisfaction that the 'TENAX' mark is a widely recognized mark in the professional beauty shop market. Opposer's witness' testimony and advertising figures offered by opposer support that conclusion. Even the testimony of applicant's witness that, when 'DINAX' was adopted, he was likely familiar with 'TENAX,' because of the distribution of the 'TENAX' products in beauty shops, further supports the conclusion. Thus, when applicant adopted and first began using its 'DINAX' mark, 'TENAX' was already a well-established trademark for like goods in the professional trade. Because of that fact, a good deal of the evidence and argument presented by the parties relates to applicant's intent in adopting 'DINAX' as a mark.
Where there is evidence of an applicant's intent to adopt a mark that suggests to purchasers a successful mark already in use by another, the Board may, and ought to, take into account that intent when resolving the issue of likelihood of confusion when that issue is not free from doubt. See Monsanto Co. v. CIBA-GEIGY Corp., 191 USPQ 173 (TTAB 1976) (and cases cited there). Applicant's witness' testimony as to the circumstances of adoption of the 'DINAX' mark is not entirely believable. The witness' testimony is believable to the extent that it is likely that the mark was adopted with the given name 'Dina' in mind. The testimony as to the adoption of the 'X' ending of applicant's mark 'DINAX' is less believable. Applicant's witness testified that the 'X' at the end of the applicant's mark stood for 'excellence.' No evidence was offered to prove that 'X' is an ordinary abbreviation or slang or shorthand for the word 'excellence.' In addition, the evidence shows that applicant has, from the start, used its 'DINAX' mark with a striped motif in its packaging. To be sure, the stripes on applicant's packaging are somewhat different from the stripes shown in opposer's pleaded registration or the stripes shown on the packaging in the various advertisements of opposer's 'TENAX' mark. Moreover, applicant has vigorously argued that the trade dress of the parties' products is irrelevant to the issue in this proceeding. That trade dress is relevant, however, to the extent that it sheds light on the circumstances surrounding the adoption and use of the 'DINAX' mark by applicant. Those circumstances, in turn, are relevant to resolving the issue of likelihood of confusion. We are convinced that it is more than coincidental that applicant's mark 'DINAX' is used on packaging which displays a striped motif reminiscent of, though not identical to opposer's striped packaging motif.
*4 While the purple color now used by opposer in some of its product advertising was not used until after applicant's adoption of its mark and use of 'DINAX' on purple packages (and while there is some evidence to suggest that opposer may have begun using the purple color to emphasize the overall similarities between applicant's packaging and its own), that fact does not diminish the similarity of the marks themselves and of the striped designs used by both parties on their packaging.
Of course, the important comparison we must make in deciding the issue of likelihood of confusion is a comparison of the word marks 'DINAX' and 'TENAX'. We find some striking similarities. First, both marks contain the same number of letters and three of the same letters. Second, there was testimony by applicant's witness that at least some of the purchasers of applicant's 'DINAX' products pronounce its mark by giving the letter 'i' a 'short' sound, thereby making the pronunciation similar to the usual pronunciation for opposer's mark 'TENAX.'
Applicant's evidence that opposer's mark has been promoted along with the words 'The Tenacious', while relevant, is of limited probative value. The extent to which there has been promotion by opposer of 'The Tenacious' in connection with its mark is not of record; in fact, the magazine advertising which is of record does not refer to the words 'The Tenacious' in connection with the mark 'TENAX.' Nor is the word 'TENAX' close enough in appearance or in spelling to the word 'tenacious' to make an obvious reference to that word. We think 'TENAX' would be viewed by purchasers as a wholly arbitrary word as applied to hair care products.
The evidence, when considered as a whole, supports a finding that, in adopting the mark 'DINAX' for hair care products, applicant intended to adopt a mark close enough to the well-known 'TENAX' mark that purchasers would be reminded of that mark upon seeing applicant's mark, but not so close to that mark that source confusion would occur. We find, in addition, that applicant got too close.
Decision: The opposition is sustained.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 436,455, filed July 27, 1983.
FN2. Registration No. 225,077, issued March 8, 1927 (renewed twice).
FN3. Registration No. 1,303,370, issued November 6, 1984. (The certificate of registration states that the stippling shown in the drawing of the mark does not represent color.)