FABRIQUE COSMETIQUE v. HONEYBEE GARDENS, 92043570 (TTAB 3-8-2007)
Fabrique Cosmetique, Inc. v. Honeybee Gardens, Inc.
Cancellation No. 92043570United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 8, 2007Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Fabrique Cosmetique, Inc., pro se.
Laura Genovese Miller of Akin Gump Strauss Hauer Feld LLP for Honeybee Gardens, Inc.
Before Seeherman, Drost, and Bergsman, Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
Fabrique Cosmetique, Inc. has petitioned to cancel U.S. Trademark Registration No. 2,552,813, owned by Honeybee Gardens, Inc., for the mark COLORBALM NATURALS (standard character format) for "lipstick." The application for registration was filed on August 1, 2001. Respondent claimed first use anywhere as of September 1, 2000 and first use in interstate commerce as of January 1, 2001. The registration issued on March 26, 2002. Respondent disclaimed the exclusive right to use "Naturals."Page 2
Petitioner brought this cancellation on the ground of priority of use and likelihood of confusion, alleging the following as its grounds for cancellation:
1. Petitioner is in the business of manufacturing, marketing and selling cosmetics;
2, Since January 1, 1999, petitioner has offered for sale and sold COLORBALM lipstick for sale in interstate commerce;
3. Since March 1, 1999, petitioner has offered for sale and sold COLORBALM NATURAL lipstick for sale in interstate commerce;
4. In August, 2000, respondent began purchasing petitioner's lipstick for resale under the mark COLORBALM NATURALS; and,
5. Respondent's COLORBALM NATURALS trademark for lipstick so resembles petitioner's COLORBALM and COLORBALM NATURAL trademarks for lipstick as to be likely to cause confusion.
Respondent denied the pertinent allegations of the petition for cancellation.
Both parties filed briefs.
The Record
By operation of the rules, the record includes the pleadings and the COLORBALM NATURALS registration file. The record also includes testimony and evidence introduced by the parties.
A. Petitioner's evidence.
1. Testimony deposition of Robert Lang, President of Fabrique Cosmetique, Inc., with attached exhibits; and,Page 3
2. The rebuttal testimony deposition of Robert Lang.[fn1]
B. Respondent's evidence.
1. Testimony deposition of Melissa Hertzler, President and CEO of respondent, with exhibits; and,
2. A notice of reliance on excerpts from the discovery deposition of Robert Lang filed pursuant to Trademark Rule 2.120(j)(1), 37 CFR § 2.120(j)(1).
Findings of Fact
Petitioner has been manufacturing, marketing, and selling cosmetics since 1992. It specializes in manufacturing products for small independent companies.[fn2] Since January 1, 1999, petitioner has been offering ColorBalm lipstick for sale in interstate commerce.[fn3] Consistent with its business plan, petitioner sells this lipstick with and also without the ColorBalm trademark.[fn4]Page 4
In 1999, petitioner used the ColorBalm orColorBalm Natural marks on its "sell sheets" (i.e., promotional flyers). Petitioner displayed the mark with the federal registration symbol placed after theColorBalm trademark.[fn5] Melissa Hertzler saw one of petitioner's ColorBalm "sell sheets" in September 2000.[fn6] The sell sheet displayed the mark as follows:
colorbalm® lipstick
Beneficial natural lip protectants and treatments combined with a lipstick Respondent did not inquire about petitioner's use of the federal registration symbol, or otherwise question whether it was an indication that petitioner was the owner of theColorBalm trademark.[fn7]
Petitioner met respondent at a trade show in the spring of 2000. At that time, petitioner showed respondent samples of theColorBalm lipstick.[fn8] While petitioner usually placed the ColorBalm trademark on sample labels, Mr. Lang was unsure whether the trade show samples displayed the mark.[fn9]
In or around September, 2000, respondent became petitioner's first ColorBalm lipstick customer.[fn10] As partPage 5
of the process of selling the ColorBalm lipstick to respondent, petitioner created a prototype display for respondent to use at the Expo East trade show in Baltimore, Maryland. The display featured the ColorBalm trademark and some variation of the trademark ColorBalm on the lipstick.[fn11]
The lipstick product was the first color cosmetic product that respondent had considered selling. The purpose of the display was to allow respondent to gauge the level of interest in the lipstick. The Expo East trade show was held in September, 2000.[fn12]
The response to the ColorBalm lipstick at the trade show was favorable. Since respondent introduced the lipstick at the trade show as ColorBalm, petitioner agreed to allow respondent to use the ColorBalm
trademark.[fn13] In a fax communication dated September 17, 2000, petitioner suggested that respondent revise petitioner's ColorBalmPage 6
trademark to ColorBalm Naturals to indicate that the lipstick was a "natural" cosmetic product.[fn14]
According to respondent, petitioner "was referring to the formula as ColorBalm, which I liked it and decided to keep in — to be consistent with our product line . . . So I decided to call the product ColorBalm Naturals, and this fax [Lang Exhibit 4; Hertzler Exhibit 9] is reiterating that conversation."[fn15] In fact, petitioner was using theColorBalm trademark to identify its lipstick products throughout its sales discussions with respondent during the spring of 2000.[fn16]
Subsequently, petitioner invoiced respondent forColorBalm lipstick shrink bands (labels applied to the lipstick tubes) on November 9, 2000.[fn17] On the original lipstick labels petitioner produced for respondent, the mark displayed the federal registration symbol in the following manner: ColorBalm® Naturals. The federal registration symbol was not included in the label artwork that respondent gave to petitioner. Respondent did not make any inquiriesPage 7
or voice any objection to the inclusion of the federal registration symbol on the labels produced by petitioner.[fn18]
According to Ms. Hertzler, respondent did not make any inquiries or voice any objections to petitioner's use of the federal registration symbol because respondent did not view petitioner's use of the federal registration symbol "as an indication of ownership."[fn19] Ms. Hertzler explained her reasoning as follows:
Once again, I will state that you randomly used the registration symbol in many different documents. It seemed like it meant nothing since you didn't have any of these things registered. You just used the R symbol on whatever you felt like.[fn20]
Petitioner also built a ColorBalm lipstick display stand for respondent.[fn21]
Petitioner invoiced respondent for ColorBalm lipstick samples on December 8, 2000 for product shipped on December 5, 2000 and December 6, 2000. Respondent's December 5, 2000 fax placing the sample order did not reference theColorBalm trademark.[fn22] Petitioner delivered the first batch ofPage 8ColorBalm Naturals lipstick to respondent on December 23, 2000.[fn23]
In January, 2001, petitioner sold its ColorBalm
lipstick to "Ricky's" in New York City. "Rickey's" sold the lipstick with the ColorBalm trademark.[fn24]
In August, 2001, petitioner sold its ColorBalm
lipstick to "Totally Kool" in Westport, Connecticut. "Totally Kool" sold the lipstick under the ColorBalmSheer
trademark.[fn25]
From October 12, 2001 through October 15, 2001, petitioner displayed its ColorBalm lipsticks at the EX — TRACTS trade show in New York City. Respondent attended this show and saw petitioner's display with theColorBalm lipsticks, but never contacted petitioner to discuss petitioner's use of the ColorBalm
trademark.[fn26]
In January, 2004, petitioner sold its ColorBalm
lipstick to Pookie Products, Inc. in New York City. Pookie Products sells the lipstick under the ColorBalm
trademark.[fn27] In September, 2004, petitioner sold its lipstick to Fresh Start Products, Inc. marking it with the brand ColorBalmPage 9Natural. Fresh Start Products sold the lipstick under the mark ColorBalm Natural through the "Cosmetic Mall" (an internet site that sells cosmetics). TheColorBalm Natural lipstick is still sold at CosmeticMall.com.[fn28]
Respondent claims that it has been selling ColorBalmNaturals lipstick since 2000.[fn29] On December 31, 2000, respondent invoiced All Natural Distributors for three "ColorBalm Naturals Introductory Deals" comprising one display stand, one set of tester lipsticks, and one case of each color.[fn30] Melissa Hertzler testified that the December 31, 2000 invoice was not respondent's first invoice for the sale of ColorBalmNaturals lipstick; however, Ms. Hertzler was unable to locate an earlier issued invoice.[fn31] The September 1, 2000 date of first use anywhere asserted in respondent's application was based on respondent's preparation for a trade show in Washington (presumably that was the Expo East trade show in Baltimore, Maryland referenced above).[fn32]
On January 7, 2002, petitioner sent respondent a "Trademark License Renewal" renewing respondent's license to use theColorBalm and ColorBalm Naturals trademarks so longPage 10
as respondent purchased the lipstick from petitioner. The Renewal did not provide any indication that respondent was required to respond or to sign the renewal. Respondent did not respond to the renewal notice, nor did respondent object to petitioner's claim that it owned the ColorBalm andColorBalm Naturals trademarks.[fn33] However, Melissa Hertzler testified that respondent never took a license for the ColorBalm or ColorBalm Naturals
trademarks from petitioner.[fn34] Ms. Hertzler denied having seen the January 7, 2002 "Trademark Renewal License" prior to this proceeding.[fn35]
In January, 2003, petitioner sent respondent a second notice renewing respondent's license to use the ColorBalm andColorBalm Naturals trademarks so long as respondent purchased the lipstick from petitioner. Respondent did not respond to the notice, and it took no action to dispute petitioner's claim of ownership to the ColorBalmNaturals trademark.[fn36]
In an e-mail to respondent dated December 18, 2003 regarding a business dispute, petitioner reminded respondent that petitioner was the owner of the ColorBalm trademark and that respondent could use it only so long as it purchasedPage 11
product from petitioner. Respondent did not challenge petitioner's assertion that it owned the ColorBalm
trademark.[fn37]
Standing
We find that petitioner, by virtue of its use of theColorBalm trademark on lipstick, has established a real interest in the proceeding and, therefore, its standing to challenge Registration No. 2,552,813 for the mark COLORBALM NATURALS. Lipton Industries, Inc. v. Ralston PurinaCo., 670 F.2d 1024, 213 UPSQ 185, 189 (CCPA 1982).
Priority
There can be no doubt but that the mark ColorBalmNaturals for lipstick so resembles the markColorBalm for lipstick that the use by two separate parties is likely to cause confusion. Thus, priority is the central issue in this case: that is, whether petitioner usedColorBalm (or variations thereof) before respondent used ColorBalm Naturals. This issue of priority is further dependent on whether petitioner's or respondent's use was as the owner of the mark or whether petitioner was merely acting as the manufacturer for respondent, or whether respondent was acting as a distributor or licensee of petitioner.Page 12
Unfortunately, the facts surrounding the first use of the mark is somewhat muddled because there is no trademark license or other agreement defining the precise relationship between petitioner and respondent and the ownership of theColorBalm and ColorBalm Naturals trademarks, nor did either party elicit coherent testimony regarding these subjects. What seems clear to us, however, is the following:
1. Since 1999, petitioner has been offering for sale ColorBalm and ColorBalm Natural
lipstick;
2. In the spring of 2000, petitioner tried to sell ColorBalm lipstick to respondent;
3. In or around September 2000, respondent became petitioner's first customer for ColorBalm
lipstick when petitioner gave or sold ColorBalm lipstick samples to respondent for use at a trade show to test public reaction to the product;
4. Based on petitioner's suggestion, respondent decided to call the lipstick it was selling ColorBalm Naturals to tout the character of the lipstick as a "natural" cosmetic product
5. Petitioner first shipped ColorBalm Naturals lipstick to respondent on December 23, 2000;
6. Respondent first shipped this same delivery of ColorBalm Naturals lipstick to All Naturals Distributors in or around December 31, 2000;
7. Petitioner made subsequent sales of ColorBalm and ColorBalm Natural
lipstick to third parties and respondent made subsequent sales of ColorBalm Naturals
lipstick to third parties; and,
8. Even though respondent knew petitioner was using the marks ColorBalm and ColorBalm Natural, respondent never inquired or lodged a protest regarding petitioner's use of those marks, nor did respondent seek to clarify ownership rights in the ColorBalm Naturals trademark.Page 13
Based on the record before us, we find that petitioner was the first to make technical trademark use of the ColorBalm
trademark, either in September, 2000, when it provided respondent with lipstick samples for use at the trade show or on December 21, 2000, when it shipped lipstick to respondent for resale as its first commercial sale. This trademark use continued with its sales to Ricky's, Totally Kool, Pookie Products, Inc., and Fresh Start Products, Inc., as discussed above.
As for respondent, the earliest date on which it may rely is December 31, 2000, the date it shipped product to All Natural Distributors. As noted previously, respondent claims that it has been selling ColorBalm Naturals lipstick since 2000. Although Melissa Hertzler testified that the December 31, 2000 invoice was not respondent's first invoice for the sale ofColorBalm Naturals lipstick, she was unable to locate an earlier issued invoice, nor did she provide any testimony about earlier technical trademark use. In view of the vagueness of Ms. Hertzler's testimony, as well as the lack of any other concrete evidence, we must treat December 31, 2000 as respondent's date of first use.
Also, under the particular circumstances of this case, we find that petitioner's pre-sale use of the ColorBalm
trademark was sufficient to create rights in this mark prior to any first use date claimed by respondent. "[P]rominentPage 14
use of a mark in pre-sales publicity directed at potential customers should suffice to create a priority date, certainly as to a knowing competitor who rushes out to make an attempted preemptive first use." 2 McCarthy On Trademarks And UnfairCompetition § 16:12 (4th ed. 2006). In such situations, "the concept of priority in the law of trademarks is applied not in its calendar sense but on the basis of the equities involved." Chandon Champagne Corp. v. San MarinoWine Corp., 335 F.2d 531, 142 USPQ 239, 242 (2nd Cir. 1964).
The use of a term in a manner analogous to trademark use (e.g., use in advertising, use as a trade name) may be considered for purposes of determining priority of trademark use. ERA Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734, 745 (TTAB 1981); Astec Industries, Inc. v.Barber-Greene Co., 196 UPSQ 578, 583 (TTAB 1977); OldSwiss House, Inc. v. Anheuser-Busch, Inc., 193 USPQ 502, 505 (TTAB 1976). Pre-sales activities sufficient to form a priority date must be of such a nature and extent as to create an association in the mind of the consuming public between the mark and the product. Selfway, Inc. v. Travelers Petroleum,Inc., 579 F.2d 75, 198 USPQ 271, 274 (CCPA 1978); TheNorac Company, Inc. v. Occidental Petroleum Corp., 197 USPQ 306, 315 (TTAB 1977).Page 15
The evidence persuades us that as of 1999, petitioner was involved in the manufacture and sale of cosmetics, including lipstick, and that it was using the trademarkColorBalm in connection with lipstick by advertising to small independent companies that lipstick bearing this mark was for sale to them for resale. Petitioner's pre-sale use ofColorBalm was open and notorious and it created an association between that mark and lipstick as evidenced by respondent's knowledge that petitioner was using theColorBalm trademark. In the spring of 2000, respondent received one of petitioner's "sell sheets" displaying theColorBalm trademark with the federal registration symbol and respondent was aware that petitioner was referring to its lipstick as ColorBalm.[fn38] In fact, Ms. Hertzler testified that respondent liked theColorBalm name and decided to keep it. Applying the principles of equity and analogous trademark use to this case, petitioner's pre-sale use of ColorBalm in 1999 may be tacked on to its technical use of that mark for the purpose of establishing petitioner's prior rights to use theColorBalm trademark.
In most cases, the issue of priority is raised by two competing parties who adopted and began using their marksPage 16
without knowledge of the other party. However, as is evident from the relationship of the parties herein, the question of priority in this case is dependent on ownership, and whether petitioner's activities can in any way be treated as being carried out for the benefit of respondent, such that petitioner's rights in the mark ColorBalm actually inure to the benefit of respondent. Priority and ownership are closely related issues because ownership in and to a mark arises from prior use of the mark in connection with a particular product or service. La Maur Inc. v.International Pharmaceutical Corp., 199 USPQ 612, 616 (TTAB 1978); E. I. du Pont de Nemours Co., v. G. C.Murphy Co., 199 USPQ 807, 812 (TTAB 1978). In this case, the relationship between petitioner, as the manufacturer of the lipstick, and respondent, as a reseller of petitioner's lipstick, raises the issue as to which party is the owner of the ColorBalm and ColorBalm Naturals
trademarks. It is petitioner's position that it has always been the owner of the mark and that respondent was petitioner's licensee. Respondent contends that petitioner "first began producing lipstick as a manufacturer for Honeybee [respondent], who was the first to sell the product in commerce in connection with the COLORBALM NATURALS mark."[fn39]Page 17
To acquire ownership of a trademark it is not enough to have created the mark. Thus, our finding that petitioner conceived the ColorBalm and ColorBalm Naturals
trademarks is not determinative of the issue of ownership.Cutting Tools, Inc. v. Custanite Corp., 220 USPQ 1006, 1009 (TTAB 1984).
The record convinces us that the relationship between petitioner and respondent was that of a manufacturer and reseller. The question of ownership of a mark as between a manufacturer and an exclusive distributor of the product is a matter of agreement between them, and in the absence of an agreement, there is a legal presumption that the manufacturer is the owner of the mark. Lutz Superdyne, Inc. v. ArthurBrown Bro., Inc., 221 USPQ 354, 362 (TTAB 1984);Audioson Vertiebs-Gmbh v. Kirksaeter Audisonics, Inc., 196 USPQ 453, 456 (TTAB 1977); Far-Best Corp. v. DieCasting "ID" Corp., 165 USPQ 277, 280 (TTAB 1970). In the present case, although respondent is an independent reseller of petitioner's lipstick rather than a distributor, its position as an independent reseller is akin to a distributor or a wholesaler because respondent was purchasing petitioner's formulations and using a variation of petitioner's mark.
Because there is no record of any agreement between the parties regarding the ownership of the mark, there is a presumption that petitioner, as the manufacturer of thePage 18
product, is the owner of the mark. This presumption may be rebutted. In such circumstances, courts look to various factors when determining which party has the superior right of ownership including:
1. Which party invented or created the mark;
2. Which party first affixed the mark to the goods;
3. Which party's name appeared on packaging and promotional materials in conjunction with the mark;
4. Which party exercised control over the nature and quality of the goods on which the mark appeared;
5. To which party did customers look as standing behind the goods (e.g., which party received complaints for defects and made appropriate replacement or refund; and,
6. Which party paid for advertising and promotion of the trademark product.
2 McCarthy On Trademarks and Unfair Competition
§ 16:48 (4th ed. 2006).
On balance, these factors demonstrate that petitioner is the owner of the mark. Petitioner created the ColorBalm,ColorBalm Natural, and ColorBalm Naturals marks. Thus, the first factor favors petitioner.
With respect to the second factor, petitioner placed the mark on the products that it sold to respondent. While we presume respondent would argue that petitioner placed the mark on the products under respondent's direction, there is no evidence on that point. However, we note that petitionerPage 19
had been promoting the lipstick at issue under theColorBalm and ColorBalm Natural marks and respondent purchased that lipstick and used the markColorBalm Naturals based on petitioner's suggestion ("How about Color Balm natural as a name to differentiate from my unnatural Color Balm colors?").[fn40] Accordingly, the second factor weighs in favor of petitioner.
The third factor (which party's name appears on packaging and promotional materials) weighs slightly in favor of respondent because respondent's name appears on the lipstick label. In addition, respondent has promoted the products to the ultimate customers and received write-ups in national magazines.[fn41] On the other hand, petitioner promotes the ColorBalm line of lipsticks in a different channel of trade: that is, to small independent cosmetic companies (as evidenced by the fact that respondent purchased the ColorBalm Naturals lipstick from petitioner).
The fourth factor (which party exercised control over the nature and quality of the product) weighs in favor of petitioner because respondent purchased petitioner's lipsticks.[fn42] Respondent failed to introduce any testimony or other evidence to prove that respondent controlled the nature and quality of the lipstick made by petitioner orPage 20
that the lipstick was made to respondent's order and specification.
Neither party introduced any testimony regarding the party to whom customers look to as standing behind the products. We assume that both parties would contend that their customers look to the respective parties as standing behind the products. However, we will not speculate on this point and, therefore, we consider the fifth factor to be neutral because of a lack of evidence.
The sixth factor (which party paid for advertising and promotion of the trademark products) is neutral because each party advertises and promotes the product in its respective channels of trade.
Another factor which we believe bears upon the ownership of the mark is petitioner's use of the ColorBalm trademarks, of which respondent had knowledge, and which did not evoke an inquiry or protest by respondent. In addition, petitioner sent respondent two notices of trademark license renewal, and respondent never questioned petitioner's rights. Such silence by respondent in the face of knowledge of petitioner's trademark use and claim of ownership leads to a strong inference that respondent recognized that petitioner had superior rights. Bellanca AircraftPage 21Corporation v. Bellanca Aircraft Engineering,Inc., 190 USPQ 158, 172 (TTAB 1976). Also, while we recognize that when petitioner first began using theColorBalm and ColorBalm Natural trademarks, it was improperly using the federal registration symbol and that it should not obtain any benefit from that improper use, nevertheless, such use of the federal registration symbol by the petitioner should have raised a question for respondent regarding petitioner's ownership of the trademarks. We find that respondent's explanation that it did not view petitioner's use of the federal registration symbol as an indication of ownership is simply not credible.
We conclude that at all relevant times it is the petitioner who was and is the true owner of the ColorBalm, ColorBalmNatural, and ColorBalm Naturals trademarks. Therefore, consistent with our findings that petitioner's December 21, 2003 sale of ColorBalm lipstick to respondent is technical trademark use and that petitioner's pre-sale activities since 1999 are sufficient to constitute analogous trademark use, petitioner has proven prior use of theColorBalm trademark for lipstick.
Decision: The petition for cancellation is granted.
[fn1] Petitioner's testimony and rebuttal testimony comprise the written statements of Robert Lang submitted to a court reporter in lieu of oral testimony. Respondent subsequently cross-examined Mr. Lang. Trademark Rule 2.123(a)(2),37 CFR 2.123(a)(2), provides that the parties may stipulate that the testimony of any witness may be submitted by way of an affidavit or declaration. Although petitioner's written statements were not properly made of record, in view of respondent's cross-examination, it is clear that respondent does not object and, therefore, we treat them as being filed pursuant to a stipulation.
[fn2] Lang Testimony Dep., ¶ 1; Lang Discovery Dep., pp. 17-20.
[fn3] Lang Testimony Dep., ¶ 2; Lang Discovery Dep., p. 5. Both parties actually use their marks as "ColorBalm," therefore, we shall refer to the marks as such.
[fn4] Lang Discovery Dep., pp. 15-22.
[fn5] Lang Discovery Dep., p. 18; Lang Testimony Dep., Lang Exhibits 1-3; Hertzler Exhibit 11. Petitioner explained that its use of the federal registration symbol was an error. Petitioner acknowledged that it should have used a superscript "tm." Lang Rebuttal Dep., ¶ 5.
[fn6] Hertzler Dep., p. 20; Hertzler Exhibit 11.
[fn7] Hertzler Dep., p. 93.
[fn8] Lang Rebuttal Dep., ¶ 4, pp. 6-7.
[fn9] Lang Rebuttal Dep., p. 7.
[fn10] Lang Testimony Dep., ¶ 3 and p. 8.
[fn11] Lang Testimony Dep., ¶ 3 and p. 8; Hertzler Dep., pp. 12-13, 71, and 74; Hertzler Exhibit 5. The parties differ as to whether the sample lipsticks were branded asColorBalm or ColorBalm Naturals. Petitioner contends that the samples were labeled as ColorBalm:
"Since they [respondent] sold it at the show asColorBalm they asked if they could use the name." Lang Testimony Dep., ¶ 3. On the other hand, respondent maintains that the samples were labeled as ColorBalmNaturals. Hertzler Dep., p. 13. Subsequently, Ms. Hertzler acknowledged that she was unsure what mark was on the samples. Hertzler Dep., p. 122.
[fn12] Lang Testimony Dep., ¶ 3 and p. 8; Hertzler Dep., pp. 12-13, 71, and 74; Hertzler Exhibit 5.
[fn13] Lang Testimony Dep., ¶ 3.
[fn14] Lang Testimony Dep., ¶ 3; Lang Exhibit 4; Hertzler Exhibit 9.
[fn15] Hertzler Dep., pp. 17-18; See also Hertzler Dep., pp. 48-49.
[fn16] Hertzler Dep., p. 48.
[fn17] Lang Testimony Dep., ¶ 4; Lang Exhibit 6. During the Lang deposition, respondent objected to the introduction of Lang Exhibits 5, 6, 7, 9, 10, and 13 — 17 on the ground that the exhibits were not produced during discovery. However, because respondent did not maintain the objections in its brief, we deem the objections to have been withdrawn.Hardrock Café International (USA) Inc. v.Elsea, 56 USPQ2d 1504, 1507 n. 5 (TTAB 2000); TBMP § 707.03(c) (2ed. rev. 2004).
[fn18] Hertzler Dep., pp. 63-65; Hertzler Exhibits 2 and 3.
[fn19] Hertzler Dep., pp. 64-65 and 67.
[fn20] Hertzler Dep., p. 67.
[fn21] Hertzler Dep., pp. 14-15, Hertzler Exhibits 4 (HGI00005), 6, and 7.
[fn22] Lang Testimony Dep., ¶ 4; Lang Exhibit 7.
[fn23] Lang Testimony Dep., ¶ 4; Lang Exhibit 5. There is a discrepancy between the testimony and Exhibit 5. Lang stated that the product was delivered on December 12, 2000, however, Exhibit 5 indicates that the invoice date was December 12, 2000 and that the delivery date was December 23, 2000.
[fn24] Lang Testimony Dep., ¶ 6, p. pp. 11-12; Exhibit 9.
[fn25] Lang Testimony Dep., ¶ 7.
[fn26] Lang Testimony Dep., ¶ 8; Exhibit 11.
[fn27] Lang Testimony Dep., ¶ 11; Lang Exhibits 13 and 14.
[fn28] Lang Testimony Dep., ¶ 12, pp. 15-16; Lang Exhibits 15 and 17.
[fn29] Hertzler Dep., p. 7.
[fn30] Hertzler Dep., p. 16; Hertzler Exhibit 8.
[fn31] Hertzler Dep., p. 31.
[fn32] Hertzler Dep., pp. 13, 40-41.
[fn33] Lang Testimony Dep., ¶ 5; Lang Exhibit 8.
[fn34] Hertzler Dep., p. 18.
[fn35] Hertzler Dep., p. 19.
[fn36] Lang Testimony Dep., ¶ 9.
[fn37] Lang Testimony Dep., ¶ 10; Lang Exhibit 12.
[fn38] In light of the display of the ColorBalm
trademark on petitioner's sell sheet (Lang Exhibit 1; Hertzler Exhibit 11), respondent's argument that petitioner used the mark to identify its formula, not its lipstick, is specious.
[fn39] Respondent's Brief, p. 4.
[fn40] Hertzler Exhibit 9; Lang Exhibit 4.
[fn41] Hertzler Dep., pp. 8-12, 23-25, and 27-28; Hertzler Exhibits 4 and 15.
[fn42] Hertzler Dep., pp. 20-21 and 69-70; Hertzler Exhibit 11.