Balenciagav.Flora Pharmica, LLC

Trademark Trial and Appeal Board

Sep 25, 2014

No. 91214074 (T.T.A.B. Sep. 25, 2014)

DUNN Mailed: September 25, 2014

Opposition No. 91214074
Balenciaga

v.
Flora Pharmica, LLC

Before Bergsman, Ritchie, and Hightower, Administrative Trademark
Judges:

By the Board:

This case comes up on Applicant’s motion for summary judgment on the
pleaded issue of likelihood of confusion, and Opposer’s motion to amend the notice of
opposition to add an allegation that its mark is famous. Both motions are contested.
On December 18, 2013, Balenciaga filed a notice of opposition which alleges
priority of use and likelihood of confusion between the marks shown below. On
January 27, 2014, Flora Pharmica, LLC filed its answer which denies the salient
allegations of the notice of opposition. Pursuant to the Board’s institution and trial
order, the discovery conference was to take place by February 26, 2014 and initial
disclosures were to be exchanged by March 28, 2014.
UNITED STATES PATENT AND
TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION
IS NOT A
PRECEDENT
OF THE T.T.A.B.
Oppositi

Opposer
issued
Serial N

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Opposition No. 91214074

3
pleadings alone.1 However, Opposer also responds on the substantive merits of the
motion, and submits its own evidence in the form of attorney Jill Browning’s
declaration and exhibits showing use of Opposer’s goods with the mark in well
known stores and in a large advertising campaign. Because both parties have
treated the motion as one for summary judgment, and have submitted evidentiary
materials outside the pleadings, the Board will treat applicant’s motion as seeking
summary judgment. See Institut National Des Appellations d’Origine v. Brown-
Forman Corp., 47 USPQ2d 1875, 1876 n.1 (TTAB 1998).
APPLICANT’S MOTION FOR SUMMARY JUDGMENT
Summary judgment is only appropriate where there are no genuine disputes
of material fact, thus allowing the case to be resolved as a matter of law. Fed. R.
Civ. P. 56(a). The party seeking summary judgment bears the burden of
demonstrating the absence of any genuine dispute as to any material fact, and that
it is entitled to a judgment under the applicable law. See Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986). Moreover, all doubts as to whether or not particular
factual issues are genuinely in dispute must be resolved against the moving party,
and the evidence of record and any inferences which may be drawn from the
underlying facts must be viewed in the light most favorable to the nonmoving party.
See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir.
1992).

1 Applicant’s TESS printouts are not subject to judicial notice by the Board. See UMG
Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (‘it is well settled that the
Board does not take judicial notice of USPTO records”). However, Applicant has
appropriately submitted them as evidence with its motion.

Opposition No. 91214074

4
The predecessor to the Board’s primary reviewing court established a list of
factors to be considered when testing for likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973) (du Pont).
The court recognized that in determining likelihood of confusion “each case must be
decided on its own facts” and each [of the thirteen elements] may from case to case
play a dominant role.” Id. In accord with this, the Federal Circuit has upheld the
Board’s determination that a single du Pont factor - the dissimilarity of the marks -
was dispositive of the likelihood of confusion issue. Kellogg Co. v. Pack'em Enters.
Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991); see also Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir.
2011) (stating that the Board need not discuss each du Pont factor and may find a
single factor dispositive).
Here, Applicant contends that Opposer’s mark FLORABOTANICA
BALENCIAGA in stylized form is so different from Applicant’s mark FLORA
PHARMICA in standard characters that there can be no likelihood of confusion. In
contrast, Opposer contends that Applicant fails to compare the overall commercial
impression of the marks, and the factor of dissimilarity of the marks cannot be
dispositive here. In order for Applicant to prevail by way of its motion for summary
judgment, the Board would have to assume that this single du Pont factor as to the
dissimilarity of the marks outweighs all the other du Pont factors.
Upon careful consideration of the evidence and arguments presented by the
parties, the Board cannot say that Applicant has demonstrated that it is entitled to
Opposition No. 91214074

5
judgment as a matter of law. The marks FLORABOTANICA BALENCIAGA and
FLORA PHARMICA employ the same term FLORA followed by terms in both cases
ending with the syllables “ICA”, and Opposer’s mark also includes its house mark.
Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying
principle that “the addition of a trade name or house mark or other such matter to
one of two otherwise similar marks will not serve to avoid a likelihood of
confusion.”). The Board finds that there are genuine issues, at a minimum, as to the
strength of Opposer’s mark and the similarities of the commercial impressions of
Opposer's and Applicant's marks when viewed as a whole which preclude entry of
judgment as a matter of law. Accordingly, Applicant's motion for summary
judgment is denied.2
OPPOSER’S MOTION TO AMEND PLEADING
On the same day that Opposer filed its opposition to Applicant’s motion for
judgment, Opposer filed a motion to amend the notice of opposition to add an
allegation that its pleaded mark is famous.3 When justice so requires, the courts
and the Board look favorably on a motion to amend the pleadings. Fed. R. Civ. P.
15(a). Like any sufficient pleading, the amended notice of opposition “must contain

2 The parties should note that evidence submitted in support of or in opposition to a motion
for summary judgment is of record only for consideration of that motion. Any such evidence
to be considered at final hearing must be properly introduced during the appropriate trial
period. Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464, 1465 n. 2 (TTAB
1993).
3 Because Opposer’s Reg. No.4526232 issued from Opposer’s pleaded app. Serial No.
85537948 after the commencement of this opposition, Opposer also moves to amend the
notice of opposition to plead the registration in place of the application, and submits a
status and title copy of the registration. Applicant does not oppose these amendments. See
Space Base Inc. v. Stadis Corp., 17 USPQ2D 1216, 1217 (notice of opposition amended
during testimony period to add claim of ownership of newly issued registration).
Opposition No. 91214074

6
sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949-50 (2009) (quoting
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). The Board will grant a
motion to amend the pleadings unless entry of the proposed amendment would
violate settled law or would be prejudicial to applicant. Karsten Manufacturing
Corp. v. Editoy AG, 79 USPQ2d 1783, 1785 (TTAB 2006).
Applicant contends that the allegation that Opposer’s mark is famous is not
plausible when Opposer’s mark has been in use only since September 2013, three
months after Applicant’s June 24, 2013 filing date. An allegation of fame as of the
filing date of an opposed application is a necessary part of a dilution claim, but not
of a likelihood of confusion claim. General Mills Inc. v. Fage Dairy Processing
Industry SA, 100 USPQ 1584, 1595 n.13 (TTAB 2011). For purposes of likelihood of
confusion, the Board generally accepts and considers evidence related to likelihood
of confusion for the period up to the time of trial, and this includes evidence of the
fame of a plaintiff's mark. Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734,
1740 n.18 (TTAB 2014). Applicant confuses the plausibility and legal sufficiency
requirements for pleading a claim with the requirements for proving the claim at
trial or on summary judgment. Both the original and amended notice of opposition
include legally sufficient claims of likelihood of confusion, and opposer is not yet
required to prove the allegations in support of the claim.
Opposer’s motion to amend the notice of opposition is GRANTED, and the
amended notice of opposition now is the operative pleading.
Opposition No. 91214074

7
Applicant is allowed until TWENTY DAYS from the mailing date of this
order to file its answer.
PROCEEDINGS RESUMED
If the parties have not conducted the discovery conference or exchanged
initial disclosures, they should do so promptly after the answer to the amended
notice of opposition is filed.
Initial Disclosures Due 10/24/2014
Expert Disclosures Due 3/23/2015
Discovery Closes 4/22/2015
Plaintiff's Pretrial Disclosures 6/6/2015
Plaintiff's 30-day Trial Period Ends 7/21/2015
Defendant's Pretrial Disclosures 8/5/2015
Defendant's 30-day Trial Period Ends 9/19/2015
Plaintiff's Rebuttal Disclosures 10/4/2015
Plaintiff's 15-day Rebuttal Period Ends 11/3/2015

In each instance, a copy of the transcript of testimony together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
oral hearing will be set only upon request filed as provided by Trademark Rule
2.l29.