IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re trademark application of:
`GUTHY-RENKER CORPORATION
`
`Opposition Number: 92047864
`
`77¢ %g 3
`
`Filed:
`
`March 13, 2007
`
`For:
`
`PROACTIVE TREATMENT PLAN
`
`Commissioner for Trademarks
`
`Post Office Box 1451
`
`Alexandria, Virginia 22313-1451
`ATTN:TTAB
`
`CERTIFICATE OF FIRST CLASS MAILING
`
`Dear Sir or Madam:
`
`Enclosed herewith are the following:
`
`1.
`
`Petitioner’s Notice of Motion and Motion for Summary Judgment
`
`Pursuant to TBMP §528 and Fed. R. Civ. P. 56; Brief in Support of
`
`Motion for Summary Judgment (19 pages);
`
`2.
`
`Declaration of Sarah A. Brown in Support of Petitioner’s Notice of
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`Motion and Motion for Summary Judgment (w/ Exhibits A — U) (118
`
`Pages);
`
`3.
`
`Declaration of Ben Van De Bunt in Support of Petitioner’s Notice of
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`Motion and Motion for Summary Judgment (wl Exhibit 1) (6 pages);
`
`and
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`4.
`
`Acknowledgement Postcard.
`
`HlllllllfllllllllllllHHIHlflllfllllllllllllfll
`02-13-2008
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`Page 1 of 2
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`U 9 P-amt
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`.2 TMI1f~:/TM rm: P..;._w.
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`Ci‘.
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`9
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`

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`Ihereby certify that this paper or fee is being deposited with the United States Postal
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`Service with sufficient postage as first class mail under 37 C.F.R., Section 1.8, on the date
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`indicated above and is addressed to:
`
`Commissioner for Trademarks
`Post Office Box 1451
`
`Alexandria, Virginia 22313-1451
`ATTN:TTAB
`
`Respectfully submitted,
`
`CISLO & THOMAS LLP
`
`Q/‘
`
`Date: February IL, 2008
`
`DMC/SAB:tm
`
`CISLO & THOMAS LLP
`
`1333 2"“ Street, Suite 500
`Santa Monica, California 90401
`
`Tel: (310) 451-0647
`Fax: (310) 394-4477
`www.cislo.com
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`T:\07-193ll\CER'I‘II-'ICA'I'E OF FIRST CLASS MAILING FOR NOTICE FOR MSLDOC
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`Page 2 of 2
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`IN THE MATTER OF REGISTRATION NO. 3,219,128
`REGISTERED ON THE SUPPLEMENTAL REGISTER ON
`
`MARCH 13, 2007
`
`
`GUTHY-RENKER CORPORATION,
`
`PETITIONER,
`
`vs.
`
`MARK SIVERD,
`
`REGISTRANT.
`
`) OPPOSITION NO. 92047864
`)
`) PETITIONER’S NOTICE OF MOTION
`) AND MOTION FOR SUMMARY
`) JUDGMENT PURSUANT TO TBMP §528
`) AND FED. R. CIV. P. 56; BRIEF IN
`) SUPPORT OF MOTION FOR
`) SUMMARY JUDGMENT
`
`) ) )
`
`[concurrently filed with Declaration of Sarah
`) A. Brown in Support Thereof, and Exhibits
`) A-U; Declaration of Ben Van De Bunt, and
`) Exhibit 1]
`
`3E
`
`KKK
`
`KK\
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................................................................ .. 1
`
`II. BACKGROUND .................................................................................................................. .. 1
`
`ARGUMENT .................................................................................................................... .. 6
`III.
`A. Legal Standard for Summary Judgment ........................................................................... .. 6
`B.
`Standing ............................................................................................................................ .. 7
`C.
`Priority .............................................................................................................................. .. 7
`D. Likelihood of Confusion (Section 2(d) of the Trademark Act) ........................................ .. 8
`1.
`Similarity of the Marks ................................................................................................. .. 8
`2. Similarity of the Goods, Trade Charmels and Target Customers .................................. .. 10
`3. Strength of Mark ............................................................................................................ .. 12
`4. Registrant’s Intent .......................................................................................................... .. 14
`
`IV.
`
`CONCLUSION ............................................................................................................... .. 15
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`. Giant Food, Inc. v. Nation’s Foodservice, Inc.,
`710 F.2d 1565, 218 USPQ 390 (Fed.Cir. 1983) ..................................................................... .. 12
`. Cope1and’s Enterprises Inc. v. CNV Inc.,
`945 F.2d 1563, 20 USPQ2d 1295 (Fed.Cir.1991) ................................................................... .. 7
`Aluminum Air Seal Mfg. Co. V. Trim-Set Corp.,
`-
`208 F.2d 374, 100 USPQ 52 (CCPA 1953) ............................................................................ .. 10
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ............................................................. .. 7
`Celotex Cogp. V. Catrett,
`~
`477 U.S. 317, 106 S.Ct. 2552, 91 L.Ed.2d 265 (1986) ............................................................. .. 6
`Cunningham v. Laser Golf Cogp.,
`222 F.3d 943, 55 USPQ2d 1842 (Fed.Cir. 2000) ..................................................................... .. 9
`E. I. du Pont de Nemours & Co.,
`476 F.2d 1357, 177 USPQ563 (CCPA 1973) ..................................................................... .. 8, 14
`Federated Foods, Inc. V. Fort Howard Paper Co.,
`544 F.2d 1098, 192 USPQ 24 (CCPA 1976) ............................................................................ .. 8
`
`Geneco Inc. V. Martz,
`66 USPQ2d 1260 (TTAB 2003) ............................................................................................. .. 11
`Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller,
`477 F.2d 586, 177 USPQ 573 (CCPA 1973) ............................................................................ .. 9
`Hewlett-Packard Co. v. Packard Press, Inc.,
`281 F.3d 1261, 62 USPQ2d 1001 (Fed.Cir. 2002) ................................................................. .. 15
`Kangol Ltd. v. KangaROOS U.S.A.,
`974 F.2d 161, 23 USPQ2d 1945 (Fed.Cir.1992) .................................................................... .. 12
`L1oyd’s Food Products Inc. v. E1i’s Inc.,
`987 F.2d 766, 25 USPQ2d 2027 (Fed.Cir.1993 ........................................................................ .. 7
`Presto Products, Inc. v. Nice Pak Products, Inc.,
`9 USPQ2d 1895 (TTAB 1998) ................................................................................................. .. 9
`Pure Gold, Inc. V. Syntex g§1.S.A.), Inc.,
`739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984) .......................................................................... .. 6
`
`Recot Inc. v. M.C. Becton,
`214 F.3d 1322, 54 USPQ2d 1894 (Fed.Cir. 2000) ................................................................. .. 13
`Ritchie v. Simpson,
`170 F.3d 1092, 50 USPQ2d 1023 (Fed.Cir. 1999) ................................................................... .. 7
`Spoons Restaurants Inc. v. Morrison Inc.,
`23 USPQ2d 1735 (TTAB 1991), affd unpub’d (Fed.Cir. 1992) ............................................. .. 9
`
`Rules
`Fed. R. Civ. P. 56(c) ..................................................................................................................... .. 6
`
`

`
`Petitioner GUTHY-RENKER CORPORATION (hereinafter “Petitioner” or
`
`“Guthy-Renker”), by and through its attorneys, respectfully submits this Notice of
`
`Motion and Motion for Summary Judgment Pursuant to TBMP 528 and Fed.R. Civ. P. 56
`
`on its count of likelihood of confusion under Section 2(d) of the Trademark Act.
`
`I.
`
`INTRODUCTION
`
`In the instant case, the parties’ respective goods/services are closely related and
`
`Registrant Mark Siverd’s PROACTIVE TREATMEN PLAN mark is confusingly similar
`
`to Petitioner Guthy—Renker’s PROACTIV and PROACTIV SOLUTION marks.
`
`Moreover, Registrant has admitted as a matter of law that: 1) Petitioner has priority in
`
`this case; 2) Registrant’s use of its Mark is likely to confuse or mislead consumers into
`
`believing that Registrant and Petitioner are connected, affiliated or related; 3) Petitioner’s
`
`customers, upon viewing goods and/or services bearing Registrant’s Mark, are likely to
`
`believe that those goods and/or services are being promoted by Petitioner; and 4) that
`
`contemporaneous use of Registrant’s Mark and Petitioner’s Mark is likely to cause
`
`confiision as to the source or sponsorship of Registrant’s services.
`
`Because Guthy-Renker has demonstrated its standing, priority and that
`
`contemporaneous use of the parties’ marks is likely to result in confusion, there are no
`
`genuine issues of fact remaining in this case and Petitioner’s Motion on its claim under
`
`Section 2(d) of the Trademark Act should be granted.
`
`II.
`
`BACKGROUND
`
`Guthy-Renker is a California corporation and markets its highly successful
`
`PROACTIV® products under its PROACTIV-forrnative marks, including its
`
`PROACTIV and PROACTIV SOLUTION marks (“PROACTIV Marks”). Guthy-Renker
`
`has continuously used its PROACTIVE Marks in commerce on products including “acne
`
`

`
`treatment preparations” and “make-up, foundation make-up, skin concealer, face powder,
`
`and sunscreen preparations” (hereinafter “Guthy-Renker’s Goods”) since at least as early
`
`as, October 16, 1991 (se_e, Declaration of Ben Van De Bunt, 113).
`
`Guthy-Renker has expended significant sums of money in advertising and
`
`promoting its PROACTIV® acne treatment and cosmetic products since it began using
`
`its PROACTIV Marks, and its sales of such products have far exceeded those
`
`expenditures. m, Van De Bunt Decl., 113. For example, in about 2007, Vanessa
`
`Williams, star of the hit television show “Ugly Betty” signed an endorsement deal for
`
`nearly twenty-million dollars to promote Guthy-Renker’s products under the PROACTIV
`
`Marks. fie, Declaration of Sarah A. Brown (hereinafter “Brown Decl.”), Exh. B).
`
`Guthy-Renker has also promoted its PROACTIV® acne treatment and cosmetic products
`
`through other celebrity endorsements, such as, for example, Jessica Simpson, who signed
`
`an endorsement deal of about three-million dollars for five years, and others such as
`
`Jennifer Love Hewitt, Serena Williams, Melissa Claire Egan and Elle Macpherson. ILL,
`
`se_e a_ls_g, Brown Decl. Exh. C.
`
`Guthy-Renker has promoted and advertised its acne treatment and cosmetic
`
`products under its PROACTIV Marks on its popular website, <www.proactive.com> and
`
`in various media, including radio, Internet, television, print advertising, mailings, direct-
`
`response infomercials and on QVC, which purports to reach over eighty percent of all
`
`U.S. cable homes and 3 million satellite dishes.
`
`_S_e_e Brown Decl., Exh. D-G, 11116-9.
`
`Guthy-Renker’s television infomercials promoting its PROACTIV products have been
`
`touted as ‘the industry’s most successful infomercial’ and won the “Infomercial of the
`
`Year” and “Best Short-Forrn Health and Beauty” awards at the Electronic Retailing
`
`Association Awards in 2006. Sic, Brown Decl., Exh. H-I, 1110-11.
`
`

`
`In addition, Guthy-Renker’s products offered under its PROACTIV Marks have
`
`been cited in the media as ‘revolutionary’, ‘monopolizing the skin care market’, as
`
`having earned over four billion dollars in sales, with $600 million in sales per year, and
`
`as having been used by over three million people. §_e§ gg, Brown Decl., Exh. H-L, 111110-
`
`14. Guthy-Renker’s PROACTIV Marks have also been touted as an ‘esteemed brand’
`
`with an ‘enviable reputation’ in skin care and beyond. S_e§ _gg., Brown Decl. I, Exh., 1111.
`
`Guthy-Renker also owns U.S. Trademark registrations for its PROACTIV marks,
`
`including U.S. Registration Nos. 2,850,933 for PROACTIV SOLUTION; 2,574,142 for
`
`PROACTIV and 1,890,769 for PROACTIV (Brown Decl., Exh. U). U.S. Registration
`
`No. 2,850,933 covers make up and other cosmetics in class 03 (first use in commerce
`
`date is October 16, 1991) and acne treatment preparations in class 05 (first use in
`
`commerce date is February 15, 1991). U.S. Registration No. 2,162,306 covers make up
`and other cosmetics in class 03 (first use in commerce date is October 16, 1991) and
`
`Registration No. 1,890,769 covers acne treatment preparations in class 05 (first use in
`
`commerce date is February 15, 1991). Both registrations are incontestable. $2, Brown
`
`Decl., Exh. U.
`
`Registrant filed his application for the PROACTIVE TREATMEN PLAN mark
`
`on December 31, 2005, which issued on the Supplemental Register on December 22,
`
`2006. Registrant had previously filed U.S. Application Serial Nos. 78/783,368 and
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`78/597,213 for the LIFE PROACTIVE and EYE PROACTIVE marks for similar and
`
`related goods as in the instant registration at issue. Those applications were abandoned
`
`on, respectively, March 6, 2007 and September 26, 2006 as result of Petitioner’s
`
`oppositions against the applicationsl (sc=._e, Brown Decl., Exh. M-N) Petitioner filed the
`
`
`
`' Applicant/Registrant defaulted in each opposition and judgment was entered against Registrant
`in Opposition Nos. 91173358 and 91171392.
`
`

`
`instant cancellation on July 12, 2007. Discovery in the instant proceeding closes on
`
`February 12, 2008 and Petitioner’s testimony period opens on April 14, 2008.
`
`The undisputed facts in the instant proceeding include the following:
`
`is the listed owner of the above-identified service mark
`Registrant
`1.
`registration which was registered on the Supplemental Register on December 22,
`2006 and covers “providing health information” in International Class 044
`(“Registrant’s Services”)(Answer, 111).
`
`is the owner of U.S. Trademark Application Serial No.
`Petitioner
`2.
`78/561,711 for the NOTHING COMPARES TO PROACTIV mark, filed with the
`Trademark Office on February 7, 2005, for skin and body care preparations
`namely, skin cleansers, skin moisturizers, skin lotions, skin soaps, sun screen
`preparations, cosmetics, non-medicated hair care preparations, non-medicated
`skin care preparations, colognes, perfumes and tooth whitening preparations, in
`International Class 003 and acne treatment preparations in International Class 005
`
`(Answer, 14).
`
`Petitioner’s first use and first use in commerce of its PROACTIV and
`3.
`PROACTIV SOLUTION marks occurred prior to the date of first use of the
`PROACTIVE TREATMENT PLAN mark, which is listed as October 15, 2006,
`and/or prior to any first use date upon which Registrant
`is entitled to rely
`(Answer, 15).
`
`Petitioner previously filed two notices of opposition against other
`4.
`applications owned by Registrant. The first opposition, regarding Application
`Serial No. 78/597,213 for the EYE PROACTIVE mark, was terminated by the
`Trademark Trial and Appeal Board (“the Board”) on September 25, 2006 by
`judgment by default. The second opposition, regarding Application Serial No.
`78/783,368 for the LIFE PROACTIVE mark, was terminated by the Board on
`March 6, 2007 by judgment by default (Answer, 1116).
`
`Petitioner has continually used its PROACTIV marks for Petitioner’s
`5.
`Goods/Services including cosmetics and acne treatment preparations, for over
`sixteen years (Requests for Admission No. 46).
`
`“PROACTIVE” is the dominant portion of Registrant’s Mark (Requests
`6.
`for Admission No. 28).
`
`Registrant’s Mark and Petitioner’s PROACTIV mark are similar in sound.
`7.
`(Requests for Admission No. 29).
`
`Registrant’s Mark and Petitioner’s PROACTIV mark are visually similar
`8.
`(Requests for Admission No. 30)
`
`

`
`Registrant’s Mark and Petitioner’s PROACTIV mark have the same
`9.
`overall commercial impression (Requests for Admission No. 31).
`
`Registrant’s Mark and Petitioner’s Mark when compared in their entireties
`10.
`are similar (Request for Admission No. 32).
`
`Consumers are more likely to remember the “PROACTIVE” portion of
`11.
`Registrant’s mark (Requests for Admission No. 33).
`
`Registrant’s Goods/Services and Petitioner’s Goods/Services are closely
`12.
`related (Requests for Admission No. 34).
`
`There is substantial overlap between the services identified in Registrant’s
`13.
`Mark and Goods/Services identified in Petitioner’s Mark (Requests for Admission
`
`No. 37).
`
`Registrant advertises or intends to advertise its services sold under its
`14.
`mark in newspapers, magazines, print advertising and on the Internet (Requests
`for Admission Nos. 21-25).
`
`The Goods/Services under Registrant’s Mark and Goods/Services under
`15.
`Petitioner’s Mark are likely to be sold in the same channels of trade (Requests for
`Admission No. 40).
`
`There is overlap between purchasers and potential purchasers of
`16.
`goods/services bearing Registrant’s Mark and goods/services bearing Petitioner’s
`Mark (Requests for Admission No. 44).
`
`Petitioner’s PROACTIV Mark enjoys considerable renown in connection
`17.
`with Petitioner’s Goods/Services (Requests for Admission No. 45).
`
`Petitioner’s Mark is a well-known mark as used in relation to skin care,
`18.
`body care, hair care and cosmetics (Requests for Admission No. 47).
`
`Petitioner has expended significant sums of money over the years in
`19.
`advertising Petitioner’s Goods/Services (Requests for Admission No. 48).
`
`20.
`
`Petitioner’s Sales of Petitioner’s Goods/Services are substantial (Requests
`
`for Admission No. 49).
`
`Consumers encountering Registrant’s Mark are likely to believe that
`21.
`Registrant’s services sold under its Mark originate with Petitioner (Requests for
`Admission No. 41).
`
`Consumers, upon viewing Registrant’s Mark are likely to believe that
`22.
`Registrant’s services sold under its Mark originate with Petitioner (Requests for
`Admission No. 39).
`
`

`
`Consumers upon viewing Registrant’s Mark are likely to believe that
`23.
`Registrant or Registrant’s Services are sponsored by Petitioner (Requests for
`Admission No. 38).
`
`Petitioner’s customers, upon viewing goods and/or services bearing
`24.
`Registrant’s Mark are likely to believe that the goods and/or services are being
`promoted by Petitioner (Requests for Admission No. 41).
`
`Registrant’s use of Registrant’s Mark is likely to confuse or mislead
`25.
`consumers into believing that Registrant and Petitioner are connected, affiliated or
`related (Requests for Admission No. 41).
`
`Registrant’s use of Registrant’s Mark is likely to confuse or mislead
`26.
`consumers into believing that Registrant and Petitioner are connected, affiliated or
`related (Request for Admission No. 42).
`
`Contemporaneous use of Registrant’s Mark and Petitioner’s Mark is likely
`27.
`to cause confusion in as to the source or sponsorship of Registrant’s Services
`(Requests for Admission No. 43).
`
`III.
`
`ARGUMENT
`
`A.
`
`Legal Standard for Summa_ry Judgment
`
`Summary judgment is appropriate in cases where the moving party establishes
`
`that there are no genuine issues of material fact which require resolution at trial and that it
`
`is entitled to judgment as a matter of law. E, Fed. R. Civ. P. 56(c); Celotex Corp. v.
`
`Catrett, 477 U.S. 317, 322, 106 S.Ct. 2552, 91 L.Ed.2d 265, 273 (1986). The purpose of
`
`the motion is judicial economy, that is, to avoid an unnecessary trial where there is no
`
`genuine issue of material fact and more evidence than is already available in connection
`
`with the summary judgment motion could not reasonably be expected to change the result
`
`in the case. S_ee_, gg. Pure Gold, Inc. v. Syntex ([1.S.A.), Inc., 739 F.2d 624, 626, 222
`
`USPQ 741 (Fed.Cir.1984).
`
`The party moving for summary judgment has the burden of demonstrating the
`
`absence of any genuine issue of material fact, and that it is entitled to judgment as a
`
`

`
`matter of law. _S_e§, gg. Copeland’s Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 1565,
`
`20 USPQ2d 1295 (Fed.Cir.199l). For purposes of summary judgment, a factual dispute
`
`is “genuine” only if, on the evidence of record, a reasonable fact finder could resolve the
`
`factual dispute in favor of the nonmoving party. §§§, g.,g. Lloyd’s Food Products Inc. v.
`
`Eli’s Inc., 987 F.2d 766, 767, 25 USPQ2d 2027 (Fed.Cir.1993). A factual dispute is
`
`“material” only if its resolution would affect the outcome of the proceeding under the
`
`relevant substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct.
`
`2505, 91 L.Ed.2d 202 (1986).
`
`Therefore, a dispute over a nonmaterial fact, i.e. a fact that would not alter the
`
`Board’s decision on the legal issue in the case, will not prevent the entry of summary
`
`judgment. Anderson, 477 U.S. 242, 248.
`
`B.
`
`Standing
`
`Petitioner has a real interest and a direct and personal stake in the outcome of the
`
`cancellation. As such, Petitioner has standing in this proceeding due to its priority of use
`
`regarding its PROACTIV and PROACTIV SOLUTION marks, claim of a likelihood of
`
`confusion and that is likely to be damaged if registration for the Subject Mark is
`
`continued. 553, Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.Cir.
`
`1999); s.e_e @, Answer, 1[4 (admitting that Registrant is the owner of App. Serial No.
`
`78/561,711 for the NOTHING COMPARES TO PROACTIV mark). Petitioner has
`
`therefore established that there is no genuine issue of fact regarding its standing.
`
`C.
`
`P_ri_<gri_tsg
`
`Guthy-Renker has been using its PROACTIV Marks on and in connection with its
`
`Goods since at least as early as October 1991, long before any date upon which
`
`Registrant may rely.2 _S_e_§, Van De Bunt Decl., 112-3, Exh. 1). In addition, Applicant has
`
`2 The registration at issue was registered on the Supplemental Register on December 22, 2006.
`
`

`
`admitted as a matter of law that Petitioner’s first use and first use in commerce of its
`
`PROACTIV and PROACTIV SOLUTION marks occurred prior to the date of first use of
`
`Registrant’s PROACTIVE TREATMENT PLAN Mark and prior to any first use date
`
`upon which Registrant is entitled to rely. Answer, 115). In addition, Registrant has
`
`admitted as a matter of law that Petitioner has continually used its Mark for Petitioner’s
`
`Goods/Services for over sixteen years. E, Requests for Admission No. 46; Brown
`
`Decl. W2-3, Exh. A. 3 Therefore, there is no genuine issue of material fact as to
`
`Petitioner’s priority in the instant proceeding.
`
`D.
`
`Likelihood. of Confusion (Section 21d) of the Trademark Act)
`
`The Board’s determination of a likelihood of confusion is based upon the factors
`
`set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ563, 567
`
`(CCPA 1973). These factors include the similarity or dissimilarity of established, likely
`
`to continue trade charmels, the conditions under which and buyers to whom sales are
`
`made, the nature and extent of any actual confusion, and the market interface between the
`
`parties. The evidentiary elements have no particular order of merit. Each may from case
`to case play a dominant role.
`lg. (internal citations omitted): However, in any likelihood
`
`of confusion analysis, two key considerations are the similarity of the goods and the
`
`similarity of the marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
`
`192 USPQ 24, 29 (CCPA 1976).
`
`1.
`
`Similarity of the Marks
`
`It is well settled that marks must be considered in their entireties as to the
`
`similarities and dissimilarities thereof. However, in articulating the reasons for reaching
`
`a conclusion on the question of likelihood of confusion, there is nothing improper in
`
`3 Because Registrant never responded to Petitioner’s Requests for Admission, the requests are
`deemed admitted. gag, Fed. R. Civ. P. 6(b) and 36(a). See also, Hobie Designs, Inc. v. Fred
`Hayman Beverly Hills, Inc., 14 USPQ2d 2064 (TTAB 1990), Brown Decl., 1H]2—3, Exh. A.
`
`

`
`stating that, for rational reasons, more or less weight has been given to a particular
`
`feature or portion of a mark. _S;e, Cunningham v. Laser Golf Corp, 222 F.3d 943, 55
`
`USPQ2d 1842, 1845 (Fed.Cir. 2000).
`
`Moreover, the differences in the marks may not be recalled by purchasers seeing
`
`the marks at separate times. The emphasis in determining likelihood of confiasion
`
`therefore is not on a side-by-side comparison of the marks, but rather must be on the
`
`recollections of the average purchaser, who normally retains a general rather than a
`
`specific impression of the many trademarks encountered. See, Grandpa Pidgeon’s of
`
`Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); fipflrg
`
`Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), @111M
`
`(Fed.Cir. 1992).
`
`The parties’ marks in this case are similar in sound, appearance, connotation and
`
`overall commercial impression in that, inter alia, the parties’ marks begin with the term
`
`“PROACTIV” or “PROACTIVE.” Often within a multi-word mark, the first word is the
`
`more prominent word, both to the eye and to the ear. §§§, Presto Products, Inc. v. Nice
`
`Pak Products Inc., 9 USPQ2d 1895 (TTAB 1998)(f1rst part of mark is most likely to be
`
`
`impressed upon the mind of a purchaser and remembered). In addition, Registrant has
`
`admitted as a matter of law that: 1) “PROACTIVE” is the dominant portion of
`
`Registrant’s mark.; 2) Registrant’s Mark and Petitioner’s Mark are similar in sound; 3)
`Registrant’s Mark and Petitioner’s Mark are visually similar; 3) Registrant’s'Mark and
`Petitioner’s Mark have the same overall commercial impression; 4)Registrant’s Mark and
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`Petitioner’s Mark when compared in their entireties are similar and 5) consumers are
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`more likely to remember the “PROACTIV” portion of Registrant’s Mark. E Requests
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`for Admission Nos. 28-33; Brown Decl., 11112-3, Exh. A. Further, Registrant’s addition
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`of the descriptive words “Treatment Plan” to its mark does not make the marks
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`sufficiently different to avoid a likelihood of confusion. 3, Aluminum Air Seal Mfg.
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`Co. v. Trim-Set Corp., 208 F.2d 374, 100 USPQ 52, 54 (CCPA l953)(as first part of the
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`mark “Trim” forms a conspicuous part thereof).
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`Accordingly, in considering the marks in their entireties, there is no genuine issue
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`of material fact that Registrant’s PROACTIVE TREATMENT PLAN mark is
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`confusingly similar to Guthy-Renker’s PROACTIV and PROACTIV SOLUTION marks
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`in sound, appearance and meaning, and that the parties’ marks create similar overall
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`commercial impressions. Further, Petitioner’s PROACTIV and PROACTIV SOLUTION
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`marks are well-known, which further supports that the public is unlikely to recall any
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`alleged differences in the parties’ respective marks (seg, Brown Decl.1[1]4, 7-14, Exh.B-F,
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`H-L).
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`2. Similarifl of the Goods, Trade Charmels and Target Customers
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`It is not necessary that the respective goods be identical or even competitive in
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`order to support a finding of a likelihood of confusion. The parties’ respective
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`goods/services in the instant case, however, are closely related. Registrant’s services are
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`“providing health information”. Petitioner’s goods include “acne treatment preparations”
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`and “make-up, foundation make-up, skin concealer, face powder, and sunscreen
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`preparations”
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`Acne is a considered to be a health condition and Registrant’s services,
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`“providing health information”, necessarily encompass providing information about acne.
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`Numerous entities providing health information to the public also provide information
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`about acne and characterize acne as a health condition. See egg, Brown Decl., 1122 Exh.
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`T. Further supporting that Registrant’s and Petitioner’s respective goods and services are
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`so closely related that consumers would believe that Petitioner sponsors or is associated
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`with Registrant’s services are the many entities that provide health information and also
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`offer acne preparations, skin care preparations, cosmetics and related goods. For
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`example, Neutrogena® offers and sells acne treatment preparations and provides health
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`information in a feature named “the dermatologists’s office.” fieg, Brown Decl. 1121,
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`Exh. S. Numerous other entities also offer health information and acne treatment
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`preparations. The concurrently-filed exhibits regarding companies such as Cetaphil®,
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`Stridex®, Leaf & Rusher Medical Skincare Clinic and the U.S. Trademark registrations
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`for marks covering both acne preparations and health information services represent only
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`a sampling of such entities. §e§, Brown Decl., 111117-20, Exh. O-R.
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`In addition, Registrant has admitted as a matter of law that Registrant’s
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`Goods/Services and Petitioner’s Goods/Services are closely related and that there is
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`substantial overlap between the services identified in Registrant’s Mark and the
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`goods/services identified in Petitioner’s Mark. Requests for Admission Nos. 34, 37,
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`Brown Decl., 11112-3, Exh. A.
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`Registrant has also admitted as a matter of law that it advertises or intends to
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`advertise its services sold under its Mark in newspapers, magazines, print advertising and
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`on the Internet (sg, Requests for Admission Nos. 21-25, Brown Decl., 11112-3, Exh. A),
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`which media Petitioner uses to promote Petitioner’s Goods (m_e, Van De Bunt Decl. 114).
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`Also, because the parties’ goods are closely related and Registrant’s recitation of
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`services is not limited in any way as to trade charmels, the prospective charmels of trade
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`and prospective purchasers must be presumed to be identical. §e_e, Geneco Inc. v. Martz,
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`66 USPQ2d 1260, 1268 (TTAB 2003)(“Given the in-part identical and in-part related
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`nature of the parties’ goods, and the lack of any restrictions in the identifications thereof
`as to trade channels and purchasers, these [items] could be offered and sold to the same
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`classes of purchasers through the same channels of trade”); Kangol Ltd. v. KangaROOS
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`ILSA, 974 F.2d 161, 164, 23 USPQ2d 1945 (Fed.Cir.1992) (Where application contains
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`no restrictions as to trade channels, Board must presume that goods are marketed in all
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`of the normal channels of trade for the identified goods and to all the classes of
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`purchasers that are targeted by Petitioner).
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`Moreover, Registrant has admitted as a matter of law that the goods/services
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`under Registrant’s Mark and goods and/or services under Petitioner’s Mark are likely to
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`be sold in the same charmel of trade. Registrant has also admitted as a matter of law that
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`there is overlap between purchasers and potential purchasers of goods and/or services
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`bearing Registrant’s Mark and goods and/or services bearing Petitioner’s Mark. Requests
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`for Admission Nos. 40, 44, Brown Decl., 1H[2-3, Exh. A.
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`3. Strength of Mark
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`The strength of a mark is determined by a variety of factors, including the length
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`of time the mark has been in use, the volume of sales under the mark and the extent of
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`advertising or promotion of the goods with which the mark is used. Giant Food Inc. v.
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`Nation’s Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390 (Fed.Cir. 1983).
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`Petitioner has used its PROACTIV and PROACTIV SOLUTION marks in connection
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`with Petitioner’s Goods continuously and without interruption since at least as early as
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`October 1991 and has heavily promoted its Marks, including by promoting Petitioner’s
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`Goods on the Internet, radio, television, in infomercials, in magazines and periodicals,
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`and has received substantial press coverage. Petitioner has spent substantial sums
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`advertising and promoting its products (§e_e, Van De Bunt Decl., 111] 3-4; Brown Decl.,
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`M4-8, 10-11 Exh. B-F, H-1).
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`In addition, Registrant admitted as a matter of law that: 1) Petitioner’s Mark
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`enjoys considerable renown in connection with Petitioner’s Goods/Services; 2) Petitioner
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`has continually used its Mark for Petitioner’s Goods/Services for over sixteen years; 3)
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`Petitioner’s Mark is a well-known mark as used in relation to skin care, body care, hair
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`care and cosmetics; 4) Petitioner has expended significant sums of money over the years
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`on advertising Petitioner’s Goods/Services and 5) that Petitioner’s sales of Petitioner’s
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`Goods/Services are substantial (Petitioner’s Requests for Admission to Registrant,
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`Request Nos. 45-49, Brown Decl., W2-3, Exh. A).
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`Petitioner’s Marks are well-known4, distinctive, strong and entitled to a broad
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`scope of protection. The strength and notoriety of Petitioner’s Marks increases the
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`likelihood that consumers will believe that Registrant’s services emanate from or are
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`sponsored by Guthy-Renker. Qj, Recot Inc. V. M.C. Becton, 214 F.3d 1322, 1326, 54
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`USPQ2d 1894 (Fed.Cir. 2000)(famous marks are accorded more protection precisely
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`because they are more likely to be remembered and associated in the public mind with a
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`weaker mark).
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`In addition, Registrant admitted as a matter of law that: 1) Purchaser and potential
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`purchasers, upon viewing Registrant’s Mark are likely to believe that Registrant’s
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`services sold under its Mark originate with Petitioner; 2) that purchasers and potential
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`purchasers, upon viewing Registrant’s Mark, are likely to believe Registrant or
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`Registrant’s services are sponsored by Petitioner; 3) that Petitioner’s customers, upon
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`viewing goods and/or services bearing Registrant’s Mark, are likely to believe that those
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`goods and/or services are being promoted by Petitioner; 4) Registrant’s use of
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`Registrant’s Mark is likely to confuse or mislead consumers into believing that Registrant
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`4 While Petitioner Petitioner has not addressed the issues of dilution and res judicata in the
`instant Motion for Summary Judgment, Petitioner preserves its right to assert its res judic