TTAB - Trademark Trial and Appeal Board - *1 AROMATIQUE, INC. v. ARTHUR H. LANG Opposition No. 87,323 November 18, 1992

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Opposition No. 87,323

November 18, 1992


Before Cissel, Hanak and Quinn






Opinion by Quinn






 An application has been filed by Arthur H. Lang to register the mark shown below





for personal sachets for men. [FN1]



 Registration has been opposed by Aromatique, Inc. on the grounds that applicant's mark, when applied to applicant's goods, so resembles opposer's previously used and registered marks AROMATIQUE and design for "room fragrant spray and fragrant potpourri, the principal ingredients of which comprise wood shavings, barks, leaves, nuts and/or cones and a blend of herbs, spices and/or scented oils" [FN2] and AROMAROCKS for "fragrance receptive decorative stones for use as an air freshener or odorizer and fragrances for use therewith" [FN3] as to be likely to cause confusion. Opposer also asserts that applicant is barred by equitable estoppel from seeking to register the mark involved herein.



 Applicant, in its answer, essentially denied the claims of likelihood of confusion and equitable estoppel. As spelled out in the Board's order dated June 26, 1992, however, certain allegations were deemed admitted under Fed.R.Civ.P. 8(d) for purposes of this proceeding. These allegations include opposer's claim of ownership and validity of its pleaded registrations.



 This case now comes up on opposer's motion for summary judgment on the ground that applicant is barred by equitable estoppel from seeking to register its mark. In support thereof, opposer sets forth the following sequence of events. Arthur H. Lang filed application Serial No. 73/777,248 on January 30, 1989 to register the mark shown below





for "personal sachets for men." After publication in the Official Gazette (Ex. A), Aromatique, Inc. (opposer herein) filed Opposition No. 81,437 against that application. During the opposition, opposer took discovery and testimony, and submitted briefs on the case. After final briefing, applicant filed, on June 4, 1991, an abandonment of his application (Ex B). The abandonment was stated to be "with prejudice" and opposer gave its written consent to the abandonment with prejudice. The Board, on June 27, 1991, issued an order wherein it stated that "the application [Serial No. 73/777,248] stands abandoned with prejudice and the opposition is dismissed without prejudice." (Ex. C). That same day, i.e., June 27, 1991, applicant filed the application which now is the subject of this proceeding. The application was published (Ex. D) and the instant opposition was filed.



 In response to opposer's motion for summary judgment, applicant filed a late brief captioned "Cross Motion For Summary Judgment" on September 8, 1992 (certificate of mailing dated August 31, 1992). Applicant's brief was due by August 17, 1992. See: Trademark Rules 2.119(c) and 2.127(a). Applicant states that the two-week delay was inadvertent, and essentially asserts that he does not concede opposer's motion.



  *2 Inasmuch as there has been no specific objection from opposer to applicant's late filing, we will exercise our discretion and consider applicant's brief. We hasten to add that, with or without the benefit of applicant's brief, the merit of opposer's equitable estoppel argument is quite clear. Applicant's brief does nothing to persuade us that estoppel should not apply in this case.



 As an initial matter, we find no genuine issue of material fact regarding opposer's standing in this case. Applicant's admission in the answer regarding opposer's ownership and the validity of the pleaded registrations, coupled with the documents submitted by opposer, establish opposer's interest in this case beyond that of an intermeddler. See: Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).



 We find that equitable estoppel is applicable in this case. Applicant's act of abandoning its prior application to register the mark shown below





"with prejudice" in Opposition No. 81,437 brought by opposer precludes applicant from refiling to attempt to register the mark shown below





involved in this proceeding. As is readily apparent, applicant merely is seeking to register a mark that is virtually identical to the mark that it previously abandoned with prejudice. The marks are for identical goods and differ ever so slightly in typeface and capitalization. Opposer, in consenting to the abandonment with prejudice and accepting dismissal without prejudice of Opposition No. 81,437, had a reasonable belief that any right applicant may have had to seek registration of AROMATIES for personal sachets for men had been abandoned. Applicant is bound by that abandonment and is equitably estopped thereby from seeking to register a substantially identical mark for identical goods. See:  Wells Cargo, Inc. (Elkart, Indiana) v. Wells Cargo, Inc., (Reno, Nevada), 606 F.2d 961, 203 USPQ 564, 567 (CCPA 1979). Applicant's two marks create virtually identical commercial impressions and the very minor alterations to the mark involved herein do not rise to the level that we can consider them to create a new mark sufficient, under the circumstances, to allow applicant to seek registration herein. The Board does not wish to encourage a losing party to modify its mark insignificantly after an adverse ruling and thereby avoid the estoppel effect of the prior adjudication. See: Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986). See also: M.A. Bergsman, Tips From the TTAB: The Effect of Board Decisions in Civil Actions; Claim Preclusion and Issue Preclusion in Board Proceedings, 80 TMR 540, 547-548 (1990).



 To the extent applicant's response brief can be construed to include a cross-motion, the motion is denied. Opposer's motion for summary judgment is granted.



  *3 Judgment is entered against applicant on the ground of equitable estoppel, the opposition is sustained and registration to applicant is refused.



R.F. Cissel



E.W. Hanak



T.J. Quinn



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 74/180,167, filed June 27, 1991, alleging a bona fide intention to use the mark in commerce.



FN2. Reg. No. 1,386,525, issued March 18, 1986; combined Sections 8 and 15 affidavit filed.



FN3. Reg. No. 1,523,111, issued February 7, 1989.


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