throbber
Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91203420
`
`Plaintiff
`
`Cosmedical Technologies Inc.
`ROBERT M SCHWARTZ
`ROBERT M SCHWARTZ PA
`2445 HOLLYWOOD BOULEVARD
`HOLLYWOOD, FL 33020
`UNITED STATES
`
`|itigation@patentmiami.com
`
`MtnSummaryJudgment112912.pdf (42 pages )(1190174 bytes )
`Cira|doDec|aration.pdf (9 pages )(145969 bytes )
`Cira|doDecExhibits01to09.pdf ( 51 pages )(5763314 bytes )
`Cira|doDecExhibits10to14.pdf ( 56 pages )(9228737 bytes )
`Cira|doDecExhibits15to21.pdf ( 75 pages )(8399258 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA508065
`ESTTA Tracking number:
`11/29/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203420
`Plaintiff
`Cosmedical Technologies, Inc.
`ROBERT M SCHWARTZ
`ROBERT M SCHWARTZ PA
`2445 HOLLYWOOD BOULEVARD
`HOLLYWOOD, FL 33020
`UNITED STATES
`litigation@patentmiami.com
`Motion for Summary Judgment
`Robert M. Schwartz
`litigation@patentmiami.com
`/robert m schwartz/
`11/29/2012
`MtnSummaryJudgment112912.pdf ( 42 pages )(1190174 bytes )
`CiraldoDeclaration.pdf ( 9 pages )(145969 bytes )
`CiraldoDecExhibits01to09.pdf ( 51 pages )(5763314 bytes )
`CiraldoDecExhibits10to14.pdf ( 56 pages )(9228737 bytes )
`CiraldoDecExhibits15to21.pdf ( 75 pages )(8399258 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 85/160,278
`Publication in the Official Gazette of September 20, 2011
`For: COS-MED
`______________________________
`
`
`
`Opposition No. 91203420
`
`Cosmedical Technologies, Inc.,
`
`Opposer,
`
`vs.
`
`
`
`
`
`Michael C. Whitehurst
`
`
`
`
`
`
`
`Applicant.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`______________________________:
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`OPPOSER'S MOTION FOR SUMMARY JUDGMENT
`
`
`
`Opposer Cosmedical Technologies, Inc. (Opposer) moves the Board for summary
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`judgment sustaining Opposition No. 91203420. Applicant's applied-for COS-MED mark is
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`likely to cause confusion, mistake, or deception as to source, sponsorship, or affiliation of
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`Applicant's goods with Opposer's COSMEDICAL TECHNOLOGIES brand, in violation of
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`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). The motion is based on the undisputed
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`facts within the attached declaration of Loretta Ciraldo, M.D., the Chief Executive Officer of
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`
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`1
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`

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`Opposer, the accompanying discovery excerpts and exhibits1 and the arguments in the
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`Memorandum.
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`Respectfully submitted,
`
`ROBERT M. SCHWARTZ, P.A.
`
`/Robert M. Schwartz/
`
`BY: Robert M. Schwartz, Esq.
`Robert M. Schwartz, P.A.
`2445 Hollywood Boulevard
`Hollywood, FL 33020
`Tel: (954) 924-0707
`Fax: (954) 924-0717
`litigation@patentmiami.com
`Attorney for Opposer
`Cosmedical Technologies, Inc.
`
`
`
`
`
`
`
`
`
`
`
`1 Discovery excerpts and exhibits include those from Applicant's response to Opposer's first set of interrogatories,
`titled by Applicant as "Respondent's Response to Petitioner's First Set of Interrogatories to Respondent" (sic),
`attached hereto as Exhibit A; Applicant's objections and responses to Opposer's first request for production of
`documents, titled by Applicant as "Respondent's Objections and Responses to Petitioner's First Request for
`Production of Documents" (sic), attached hereto as Exhibit B; and Applicant's application as shown in the
`Trademark Electronic Search System as Exhibit C.
`
`
`
`2
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 85/160,278
`Publication in the Official Gazette of September 20, 2011
`For: COS-MED
`______________________________
`
`
`
`Opposition No. 91203420
`
`Cosmedical Technologies, Inc.,
`
`Opposer,
`
`vs.
`
`
`
`
`
`Michael C. Whitehurst
`
`
`
`
`
`
`
`Applicant.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`______________________________:
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`MEMORANDUM IN SUPPORT OF
`OPPOSER'S MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`STATEMENT OF UNDISPUTED FACTS
`
`A. Opposer.
`
`Since at least 1993, and prior to any date upon which Applicant can rely, Opposer has
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`been using the mark COSMEDICAL TECHNOLOGIES continuously in the United States in
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`connection with a full line of skin care preparations. Opposer is the owner and registrant of U.S.
`
`Trademark Registration No. 3,301,694 for the mark COSMEDICAL TECHNOLOGIES, filed
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`February 9, 2005, and issued on October 2, 2007, for “cosmetics, namely non-medicated skin
`
`care preparations,” in International Class 3, and for “medicated skin care preparations,” in
`
`
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`3
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`

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`International Class 5 ("Opposer's Mark"). This registration is based on first use and first use in
`
`commerce dates of at least as early as July 6, 1993. (Ciraldo Decl. ¶ 2).
`
`Since its inception, Opposer has developed and manufactured its own proprietary skin
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`care preparations under the direction of its master formulator, Dr. Loretta Ciraldo, MD, FAAD.
`
`Dr. Ciraldo is the Chief Operating Officer of Opposer, and in addition to developing the
`
`formulations for COSMEDICAL TECHNOLOGY products, is a practicing dermatologist with
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`over thirty years of laboratory and clinical experience. (Ciraldo Decl. ¶ 3). Dr. Ciraldo is a
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`Professor of Dermatology and Cutaneous Surgery at the University of Miami Miller School of
`
`Medicine, where she is Director Emeritus of the Appearance Center for Cosmetic Dermatology.
`
`She has appeared on national television, including Good Morning America, and has been
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`featured in O (Oprah), Shape, New Beauty and Seventeen magazines. In addition, Dr. Ciraldo is
`
`a bestselling author. Her book "6 Weeks to Sensational Skin" has been featured on national
`
`television shows and in magazines. Further, Dr. Ciraldo is a member of the American Academy
`
`of Dermatology. (Ciraldo Decl. ¶ 4). Dr. Ciraldo’s biography is attached to the Ciraldo Decl. as
`
`Exhibit 3.
`
`Opposer sells its dermatologist-formulated skin care products under the mark
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`COSMEDICAL TECHNOLOGIES directly to skin care specialists and licensed professionals
`
`(Opposer’s clients). In addition, Opposer provides its clients with comprehensive education
`
`programs which highlight the basic science of Opposer’s products, instruct on the use of the
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`products, as well as provide suggestions for effective selling techniques for Opposer’s clients to
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`achieve maximum results for their patients and clients. (Ciraldo Decl. ¶ 5).
`
`Opposer's skin care preparation products include anti-aging creams; redness/sensitivity
`
`formulas; rosacea formulas; sun care formulas; anti wrinkle serums and creams; firming products
`
`
`
`4
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`

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`for the face, neck and chest; skin rejuvenating products for the hands, arms and chest; cosmetic
`
`facial peels; skin preparations for use before and after facial laser peels; exfoliators; toners;
`
`serums; cleansers; hydration creams; body treatment lotions; and eye and lip treatment masks
`
`and gels. (Ciraldo Decl. ¶ 6).
`
`Opposer’s product training and educational programs are offered on the Internet at
`
`Opposer’s website as webinars, at in-person seminars presented by Opposer, as well as at
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`Opposer’s product exhibits and trade shows where Opposer’s products are displayed and sold.
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`Said training and educational programs highlight the basic science and formulation of Opposer’s
`
`brand of skin care products. (Ciraldo Decl. ¶ 7).
`
`In addition to Opposer’s training and educational programs, Opposer advertises and
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`promotes its skin care preparations under the COSMEDICAL TECHNOLOGIES mark at spaces
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`and booths at exhibits and trade shows such as the American Academy of Dermatology (AAD)
`
`show, the International Spa Association (ISPA) show, and at the HBA Global Expo show.
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`Opposer’s clients attend these shows. Opposer’s clients attend these shows. (Ciraldo Decl. ¶ 8).
`
`Opposer also advertises its products in banner advertisements on the AAD website, on
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`Opposer’s website www.cosmedicaltechnologies.com, in Opposer’s webinars, through
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`Opposer’s catalog, through direct Internet advertising e-mails to Opposer’s customers, and
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`through Google AdWords, where leads are generated and followed up by Opposer's customer
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`service representatives. (Ciraldo Decl. ¶ 9).
`
`Opposer also advertises in the trade publications American Spa and DAYSPA, and Skin
`
`& Allergy News. Said trade publications are directed to Opposer’s clients as well as to
`
`Applicant’s customers. (Ciraldo Decl. ¶ 10).
`
`
`
`5
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`

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`Opposer’s clients purchase Opposer’s skin care products as follows: 1) products which
`
`Opposer formulates according to Opposer’s clients’ specific requirements; 2) Opposer’s
`
`packaged skin care preparations bearing Opposer’s clients’ private label names or marks; and 3)
`
`Opposer’s packaged skin care preparations bearing Opposer’s mark COSMEDICAL
`
`TECHNOLOGIES (Ciraldo Decl. ¶ 11).
`
`Opposer’s clients purchase Opposer’s products by viewing the COSMEDICAL
`
`TECHNOLOGY products on Opposer’s website, or by using Opposer’s catalog and then sending
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`Opposer’ order sheets to Opposer, or communicating by telephone directly with a sales person at
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`Opposer’s offices. Opposer’s clients obtain the order sheets from Opposer. (Ciraldo Decl. ¶ 12).
`
`Opposer’s clients include skin care professionals such as dermatologists, family
`
`practitioners, chiropractors, obstetricians, gynecologists, dentists, and plastic surgeons, skin care
`
`specialists such as aestheticians, and spas and skin care clinics. Further, members of the AAD at
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`least include dermatologists, plastic surgeons and skin care specialists. (Ciraldo Decl. ¶ 13).
`
`As noted above, Opposer's COSMEDICAL TECHNOLOGY products specifically
`
`include cosmetic facial peels; and skin preparations for use before and after facial laser peels
`
`(Ciraldo Decl. ¶ 14, Ex. 17 and 18). Opposer’s clients use Opposer’s products to provide
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`services to their patients, clients and customers. Typically, Opposer’s clients, e.g. dermatologists
`
`and plastic surgeons, offer a full range of skin care services that include both facial peels and
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`laser peels, eye wrinkle removal and skin lifting, face slimming, wrinkle removal, skin
`
`tightening, neck wrinkle removal, cellulite melting, tattoo removal, body slimming, and body
`
`shaping. (Ciraldo Decl.¶ 15).
`
`In particular, Opposer's clients, such as dermatologists, may recommend a cosmetic peel
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`as an initial, less invasive option that uses Opposer’s peel products, before recommending or
`
`
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`6
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`

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`proceeding with a laser peel. One of Opposer's webinars teaches comparisons between peels
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`using Opposer's products and laser peels. (Ciraldo Decl.¶ 16). Opposer's clients, such as
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`dermatologists, offer both cosmetic skin peels as well as laser peels and treatments. They also
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`purchase both cosmetic skin peel products from Opposer as well as Opposer’s products for use
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`before and after laser peels and treatments. As will be shown below, Applicant's customers are
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`identical and/or similar to Opposer’s clients, and likely would purchase both Opposer’s products
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`sold under Opposer’s Mark and Applicant’s products sold under Applicant’s Mark. Cosmetic
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`skin peels and laser peels are offered by both dermatologists and plastic surgeons, both of which
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`could purchase Opposer’s peel products and Applicant’s laser for cosmetic procedures and for
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`cosmetic treatment of the face and skin. (Ciraldo Decl. ¶ 17).
`
`The annual sales of Opposer’s skin care products under the COSMEDICAL
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`TECHNOLOGIES mark has generated $3.9 million annually over the past three years. Opposer
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`has spent on average $17,000 annually on product advertising, marketing, and on training,
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`exhibits and shows in connection with the COSMEDICAL TECHNOLOGIES mark. (Ciraldo
`
`Decl. ¶18).
`
` For more than nineteen years, Opposer has abbreviated its COSMEDICAL
`
`TECHNOLOGIES Mark, using the shortened term COSMED on its products and in
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`communications, including answering the telephone with the term "COSMED" instead of the
`
`longer mark COSMEDICAL TECHNOLOGIES. In addition, this shortened term also has been
`
`used for at least nineteen years on the labels of certain of the COSMEDICAL TECHNOLOGY
`
`skin care preparations, including facial peels. (Ciraldo Decl. ¶ 19; Ex. 17 and 20).
`
`At least one of the plastic surgeons who purchases COSMETICAL TECHNOLOGIES
`
`brand of skin care products performs tattoo removal services using laser equipment, and uses the
`
`
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`7
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`

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`COSMETICAL TECHNOLOGIES brand of skin care products in conjunction with said tattoo
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`removal services. (Ciraldo Decl. ¶ 20).
`
`B.
`
`Applicant.
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`Applicant has applied to register the mark COS-MED for lasers for cosmetic procedures
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`and for cosmetic treatment of the face and skin. Applicant’s mark COS-MED is wholly
`
`contained within the first portion of Opposer’s mark. Further, Applicant sells its products to the
`
`same skin care professionals as Opposer. Both Opposer's and Applicant's products are used by
`
`their respective clients to enhance the appearance of the customers to whom they provide
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`services. Specifically, as set forth in paragraph 23 of the Ciraldo Declaration, Applicant
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`promotes the services set forth in italics in its advertising and brochures. These same services
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`are offered by Opposer’s clients using Opposer’s products . (Ciraldo Decl. ¶¶ 21 and 23). See
`
`also Exhibit A, Applicant’s responses to Interrogatory Nos. 4, 5 and 11 and Exhibit B pp. 6 of
`
`13 to 8 of 13 (emphasis added), documents provided by Applicant in its responses to Requests
`
`for documents.
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`Applicant’s Application Serial No. 85/160,278 for the COS-MED mark was filed
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`October 25, 2010 in International Class 10 for "lasers for medical cosmetic procedures" and
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`"lasers for the cosmetic treatment of the face and skin", based on alleged first use on July 15,
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`2005 ("Applicant's Application") and was published on September 20, 2011. See attached
`
`Exhibit C (taken from the Notice of Opposition).
`
`Applicant sells its products for cosmetic procedures and for cosmetic treatment of the
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`face and skin under the COS-MED mark. Applicant's COS-MED products, namely lasers, are
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`used by its customers to perform such services as eye wrinkle removal, skin lifting, face
`
`
`
`8
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`

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`slimming, wrinkle removal, skin tightening, and neck wrinkle removal. See Exhibit B, pp. 6 of
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`13 to 8 of 13 (emphasis added).
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`Applicant advertises its products in publications directed to skin care professionals,
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`chiropractors, and spa operators. See Exhibit B, pp. 9 of 13 to 13 of 13.
`
`
`
`II.
`
`ARGUMENT
`
`A.
`
`The Standard for Summary Judgment
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`A motion for summary judgment is an appropriate method for disposing of an opposition
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`when "there is no genuine dispute as to any material fact and the moving party is entitled to
`
`judgment as a matter of law." Fed. R. Civ. P. 56(a); see 37 C.F.R. § 2.116(a) (Federal Rules of
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`Civil Procedure generally apply to opposition); TBMP § 528.01. "The summary judgment
`
`procedure is regarded as 'a salutary method of disposition,' and the Board does not hesitate to
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`dispose of cases on summary judgment where appropriate." TBMP § 528.01.If the moving party
`
`meets its burden, "the nonmoving party may not rest on mere denials or conclusory assertions,
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`but rather must proffer countering evidence, by affidavit or as otherwise provided in Fed. R. Civ.
`
`P. 56, showing that there is a genuine factual dispute for trial." Id. (citations omitted); see Fed. R.
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`Civ. P. 56(e); see also Sweats Fashions Inc. v. Pannill Knitting Co., 4 USPQ2d 1793,1797 (Fed.
`
`Cir. 1987) ("[m]ere conclusory statements and denials do not take on dignity by placing them in
`
`affidavit form") (citation omitted). Simply put, Applicant cannot create a genuine factual dispute
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`merely by denying or contradicting Opposer's sworn statements, or by claiming without proof
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`that Opposer's evidence is not accurate.
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`Here, summary judgment is appropriate because there is and can be no material disputed
`
`fact. Opposer has priority in its use of the mark COSMEDICAL TECHNOLOGIES, and
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`
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`9
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`

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`Applicant cannot prove anything to the contrary. Further, given Opposer's registration,
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`Applicant's application, and the facts noted below, there can be no material dispute that there is a
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`likelihood of confusion between Opposer's COSMEDICAL TECHNOLOGIES mark and
`
`Applicant's COS-MED mark in connection with their respective goods. Accordingly, the
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`undisputed evidence below clearly supports a finding of summary judgment in Opposer's favor.
`
`B.
`
` Summary Judgment on the Issues of Priority and Likelihood of Confusion is
`Dispositive in this Proceeding
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`In a trademark opposition, the issues of likelihood of confusion and likelihood of dilution
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`are each dispositive: if likelihood of confusion exists, the Board must refuse to register the
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`opposed junior application. Therefore, a finding of priority and likelihood of confusion moots the
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`likelihood-of-dilution question. In the interest of judicial economy, Opposer moves for summary
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`judgment only on the issue of likelihood of confusion. But Opposer does not concede the
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`likelihood-of-dilution issue; it reserves its right to present evidence of likelihood of dilution at
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`the trial stage of this proceeding, if a trial is necessary.
`
`Opposer Has Priority in Its Use of Opposer's Mark for Its Goods
`
`1.
`
`To establish priority, an Opposer "must show proprietary rights in the mark that produce
`
`a likelihood of confusion .... These proprietary rights may arise from a prior registration, prior
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`trademark or service mark use, prior use as a trade name, prior use analogous to trademark or
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`service mark use, or any other use sufficient to establish proprietary rights." Herbko Int'l, Inc. v.
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`Kappa Books, Inc., 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); see also TMBP § 309.03(c)(A).
`
`Here, as noted above, Opposer owns a federal registration, filed on February 9, 2005 and
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`issued on October 2, 2007, for the mark COSMEDICAL TECHNOLOGIES for “cosmetics,
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`namely non-medicated skin care preparations”, in International Class 3, and for “medicated skin
`
`
`
`10
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`

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`care preparations”, in International Class 5. 2 This registration is based on a first use date of July
`
`6, 1993.
`
`
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`Applicant, on the other hand, filed the Application under Section 1(a) of the Trademark
`
`Act, 15 U.S.C. § 1051(a), on August 25, 2010, and claims July 15, 2005 as dates of first use and
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`first use in commerce for its mark COS-MED.
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`
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`Opposer's registration, which has an application date and first-use date before
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`August 25, 2010 (Applicant's filing date), proves Opposer's priority in the COSMEDICAL
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`TECHNOLOGIES mark. Further, the filing date of Opposer's application for its trademark
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`registration is prior to any date of first use on which Applicant can rely. TBMP §309.03(c)(A).
`
`Because Opposer's pleaded registration is of record, § 2(d) priority is not at issue in this
`
`proceeding. Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009).
`
` Applicant's COS-MED Mark is Likely to Cause Confusion with Opposer's
`2.
`COSMEDICAL TECHNOLOGIES Mark
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), states in part that a trademark shall
`
`be refused registration if it "so resembles ... a mark or trade name previously used in the United
`
`States by another and not abandoned, as to be likely, when used on or in connection with the
`
`goods of the applicant, to cause confusion, or to cause mistake, or to deceive .... " Applicant's
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`registration and use of COS-MED on the applied-for goods is likely to cause confusion, mistake,
`
`and deception about the source of Applicant's goods and the connection of those goods to
`
`Opposer.
`
`
`2Under 37 C.F.R. § 2. 122(d)(1), Opposer has properly introduced its U.S. trademark registration into
`evidence by attaching a U. S. Trademark and Patent Office electronic database printout for the registration to
`Opposer's notice of opposition. In addition, attached to the Declaration of Loretta Ciraldo, Exhibit 2, is a copy of a
`certified copy of the certificate of registration.
`
`
`
`
`11
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`

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`In determining whether there is a likelihood of confusion under Section 2(d), the Board
`
`considers the factors of In re E. I duPont de Nemours & Co., 177 USPQ 563 (CCPA 1973) that
`
`are of record. Here, an analysis of these factors make clear that the mark COS-MED used in
`
`connection with the goods set forth in the Application is likely to cause confusion with the prior-
`
`used Opposer's Mark for Opposer's goods.
`
`The Board also must resolve any doubts on the question of likelihood of confusion
`
`against the Applicant who, as a newcomer, has the opportunity and obligation to avoid confusion
`
`with existing marks. See TBC Corp. v. Holsa Inc., 44 USPQ2d 1315, 1318 (Fed. Cir. 1997); In re
`
`Hyper Shoppes (Ohio) Inc., 6 USPQ2d 1025, 1026 (Fed. Cir. 1988). These principles require that
`
`the Board grant summary judgment to Opposer.
`
`
`
`a.
`
` Similarity of the Marks
`
`The first duPont factor considers "[t]he similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation and commercial impression." duPont, 177 USPQ
`
`at 567. The test is not whether the marks can be distinguished in a side-by-side comparison, but
`
`rather whether the marks are sufficiently similar to be likely to cause confusion as to the source
`
`of the goods offered under the respective marks, e.g., Sealed Air Corp. v. Scott Paper Co., 190
`
`USPQ 106, 108 (TTAB1975) (citations omitted).
`
`Although marks must be compared in their entireties, one feature of the mark may be
`
`more significant than others, and it may be appropriate to give more weight to this dominant
`
`feature in determining the commercial impression created by the mark. See Packard Press, Inc.
`
`v. Hewlett-Packard Co., 62 USPQ2d 1001, 1003 (Fed. Cir. 2000) ( finding the word PACKARD
`
`to be the dominant feature of both the applicant's mark PACKARD TECHNOLOGIES and the
`
`opposer's HEWLETT PACKARD mark, and holding that therefore PACKARD
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`
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`12
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`

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`TECHNOLOGIES was confusingly similar to HEWLETT PACKARD). In Giant Food, Inc. v.
`
`Nation's Foodservice, Inc. 710 F.2d 1565, 1570(Fed. Cir. 1983), the Court found that the word
`
`GIANT was the dominant feature of the parties’ marks, which may be given greater force and
`
`effect, and held that the mark GIANT HAMBURGERS was confusingly similar to the marks
`
`GIANT FOOD, SUPER GIANT, GIANT FOOD and Design and GIANT and Design. See also
`
`In re Denisi, 225 USPQ 624, 624 (TTAB 1985) ("if the dominant portion of both marks is the
`
`same, then confusion may be likely notwithstanding peripheral differences") (citations omitted;
`
`TMEP § 1207.01(b)(ii) ("Marks may be confusingly similar in appearance despite the addition,
`
`deletion or substitution of letters or words").
`
`In the instant case, the dominant portion of both parties' marks is COSMED. Indeed, the
`
`dominant term COSMED is the focus in both Applicant's COS-MED mark and Opposer's
`
`COSMEDICAL TECHNOLOGIES mark, where COSMED has prominence as the first portion
`
`of Opposer's mark, and applicant's mark consists solely of the term COS-MED. See Palm Bay
`
`Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
`
`1689, 1692 (Fed. Cir. 2005) (consumers are generally more inclined to focus on the first word,
`
`prefix or syllable in a mark); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
`
`1897 (TTAB 1988) (often the first part of a mark is most likely to be impressed upon the mind of
`
`a purchaser and remembered when making purchasing decisions).
`
`Applicant’s COS-MED mark is identical to the first portion, COSMED, of the first word,
`
`COSMEDICAL, of Opposer’s mark, and is wholly contained therein. Moreover, when
`
`comparing marks, the use of a hyphen does not make a difference. See Thymo Borine
`
`Laboratory v. Winthrop Chemical Co., Inc., 155 F.2d 402, 33 C.C.P.A. 1104, 1946 Dec. Comm'r
`
`Pat. 442, 69 USPQ 512, 514 (CCPA 1946) (the hyphen in applicant's mark THY-RIN has no
`
`
`
`13
`
`

`
`significance); Charrette Corp. v. Bowater Communication Papers, Inc., 13 USPQ2d 2040, 2042
`
`(TTAB 1989) (registrant's PRO-PRINT and petitioner's mark PROPRINT are identical except
`
`for the division of registrant's mark by a hyphen between the syllables); Goodyear Tire &
`
`Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978) (FAST-FINDER with a
`
`hyphen is substantially identical to FASTFINDER without a hyphen).
`
`Likelihood of confusion is often found where the entirety of one mark is incorporated
`
`within another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY'S PIZZA for restaurant
`
`services specializing in pizza and PERRY'S for restaurant and bar services); Johnson Publishing
`
`Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics
`
`and EBONY DRUM for hairdressing and conditioner); and In re South Bend Toy Manufacturing
`
`Company, Inc., 218 USPQ 479, 480 (TTAB 1983) (LIL' LADY BUGGY for toy doll carriages
`
`and LITTLE LADY for doll clothing).
`
`Further, COSMED, the dominant portion of Opposer's Mark, and the sole component of
`
`Applicant's Mark, sounds the same when spoken and therefore confusion is likely. See Giant
`
`Food, 710 F.2d at1571 (the Court found that the dominant portion GIANT in both parties' marks
`
`sounds the same when spoken, and gave this factor great weight in determining that Applicant's
`
`mark GIANT HAMBURGERS was confusingly similar to opposer's marks GIANT FOOD,
`
`SUPER GIANT, GIANT FOOD and Design, and GIANT and Design).
`
`COSMED is an abbreviation or shortened version of the term COSMEDICAL, and in
`
`fact, Opposer itself uses this abbreviation COSMED in connection with certain of its skin care
`
`preparations, specifically facial peels, where it appears on the product label. (Ciraldo Decl. ¶ 19;
`
`Ex. 17 and 20). Further, as indicated above, for more than nineteen years, Opposer has used the
`
`shortened term COSMED in communications, including answering the telephone with the term
`
`
`
`14
`
`

`
`"COSMED" instead of the longer mark COSMEDICAL TECHNOLOGIES. (Ciraldo Decl. ¶
`
`19). For all the reasons stated above, the marks are similar, and this factor favors Opposer.
`
`b.
`
`Similarity of the Parties' Goods and Services
`
`The second factor weighs "[t]he similarity or dissimilarity and nature of the goods or
`
`services as described in an application or registration or in connection with which a prior mark is
`
`in use." duPont, 177 USPQ at 567. The goods set forth in the Application are those that must be
`
`considered, even if the actual goods that Applicant sells may be more limited in scope. See,
`
`e.g.,In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); Tuxedo Monopoly, Inc. v.
`
`General Mills Fun Group, Inc., 209 USPQ 986, 988 (CCPA).
`
`The authority is legion that the question of registrability of an applicant's mark must be
`decided on the basis of the identification of goods set forth in the application regardless
`of what the record may reveal as to the particular nature of an applicant's goods, the
`particular channels of trade or the class of purchasers to which sales of the goods are
`directed.
`
`OctocomSys.lnc. v. Houston Computer Servs. Inc., 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
`
`(citations omitted). Moreover, the applicant's description of goods or services "must be construed
`
`most favorably to the opposing prior user." Tuxedo Monopoly, 209 USPQ at 988 (citations
`
`omitted).
`
`Goods or services do not have to be identical or even competitive to find likelihood of
`
`confusion. E.g., In re Opus One, 60 USPQ2d at 1814-15; In re Melville Corp., 18 USPQ2d 1386,
`
`1388 (TTAB 1991). Instead, it is enough that goods or services are related or that the conditions
`
`and activities surrounding their marketing are such that they would be likely to be encountered
`
`by the same persons under circumstances that could, because of the marks used, give rise to a
`
`mistaken belief that they originate from the same source or that there is an association or
`
`
`
`15
`
`

`
`connection between the sources of the respective goods or services .E.g., In re Opus One, 60
`
`USPQ2d at 1814-15; In re Melville Corp., 18 USPQ2d at 1388.
`
`Both parties offer goods to the same professional skin specialists. The respective goods
`
`are intended to enhance a person's appearance (Ciraldo Decl. ¶¶ 17, 21). Opposer's
`
`COSMEDICAL TECHNOLOGIES mark is registered for a variety of medicated and cosmetic
`
`non-medicated skin care preparations related to enhancing a person's appearance. Undeniably,
`
`applicant's goods, namely, lasers for medical cosmetic procedures and for the cosmetic treatment
`
`of the face and skin sold under its COS-MED mark have a "cosmetic" purpose.
`
`Furthermore, the third-party registrations and the attached summary thereof, as well as
`
`the related evidence of their use in commerce, show that skin care preparations in Classes 003
`
`and 005 and lasers for the treatment of the face and skin in Classes 009 and 010 may emanate
`
`from a single source in connection with the same mark. (Ciraldo Decl. ¶ 22; Ex. 21). See In re
`
`Albert Trostel & Sons Co., 29 USPQ 2d 1783, 1786 (TTAB 1993) (third-party registrations
`
`which individually cover a number of different items and which are based on use in commerce
`
`may serve to suggest that the listed goods are of a type which may emanate from a single
`
`source); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP
`
`§1207.01(d)(iii).
`
`As shown in the evidence submitted by Opposer, purchasers of the products sold by both
`
`Opposer and Applicant include physicians, chiropractors, spas, skin care clinics, and skin care
`
`specialists, such as aestheticians. These customers use the parties' respective goods to provide
`
`similar services, e.g., chemical facial peels in the case of Opposer, and laser facial peels in the
`
`case of Applicant. (Ciraldo Decl. ¶¶ 13, 15, 17 and 21).
`
`
`
`16
`
`

`
`Further, as noted above, Applicant's COS-MED laser products are used by Applicant's
`
`customers to perform such services as eye wrinkle removal, skin lifting, face slimming, wrinkle
`
`removal, skin tightening, and neck wrinkle removal. Exhibit B, pp. 6 of 13 to 8 of 13 (emphasis
`
`added).
`
`Opposer's COSMEDICAL TECHNOLOGIES products are used by Opposer's customers
`
`as follows: 1) Hyaluronic Eye Treatment, Ultra Firming Eye, Nutra Fill, Ultra Benefits Eye,
`
`Soothing Eye Mask and Wri-Lax are used for eye wrinkle removal and skin lifting (services
`
`promoted by Applicant in its advertising to its customers); 2) Wri-Lax, Tightening Renewal
`
`Mask, Vita Soothe, Lipids, 02 Lift Mask, and Acai Moisturizing Mist are used for face slimming,
`
`wrinkle removal and skin tightening (services promoted by Applicant in its advertising to its
`
`customers); 3) Wri-Lax, Ultra Neck and Chest, Tightening Renewal Mask, 02 Lift Mask, and
`
`Nutra Fill are used for neck wrinkle removal (services promoted by Applicant in its advertising
`
`to its customers); and 4) Ultra Benefits Lotion, and Acai Moisturizing Mist are used for body
`
`slimming (services promoted by Applicant in its advertising to its customers). In short, Opposer's
`
`goods and Applicant's goods are used for the same purposes. (Ciraldo Decl. ¶ 23). Accordingly,
`
`the parties' respective goods are highly related and overlapping.
`
`c.
`
`The Parties' Channels of Trade and Customers
`
`In determining likelihood of confusion, the Board also considers "[t]he similarity or
`
`dissimilarity of established, likely-to-continue trade channels," duPont, 177 USPQ at 567, and
`
`the classes of purchasers. E.g., Packard Press, Inc. v. Hewlett-Packard Co., 62 USPQ2d 1001,
`
`1004-05 (Fed.Cir. 2000). The Board may find goods to be related if the circumstances
`
`surrounding their marketing would result in relevant consumers mistakenly believing that the
`
`goods originate from or are associated with the same source. See In re International Telephone &
`
`
`
`17
`
`

`
`Telegraph Corp., 197 USPQ 910,911 (TTAB 1978).When goods are marketed through the same
`
`channels, confusion is more likely. In the instant case, both parties use overlapping

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