Decision shows relevance of prior applications to demonstrate lack of bona fide intent

United States of America

In L’Oréal  SA v Marcon (Opposition 91184456, March 20 2012), the Trademark Trial and Appeal Board (TTAB) has rejected on several, independent grounds the intent-to-use trademark application for L’OREAL PARIS filed by Robert Marcon, an individual, for “aloe vera beverages”. In its precedential opinion, the TTAB denied registration because the mark applied for was filed in bad faith and would create a likelihood of confusion with the well-known L’OREAL and L’OREAL PARIS marks. The TTAB held that the applicant’s history of filing applications consisting of the well-known marks of others constituted objective evidence that supported a finding of bad faith and also held that such objective evidence supported a finding that the applicant lacked a bona fide intent to use the mark. 

This application has a lengthy history. Filed in late 2003, the Trademark Office initially refused registration of the intent-to-use application on the grounds that the mark falsely suggested a connection with the federally registered L’OREAL mark, which the examining attorney concluded constituted a famous brand. Upon appeal by the applicant, the TTAB remanded the application to the Trademark Office on the grounds that the examining attorney had failed to meet her burden of proving that L’OREAL is a famous brand. After the remand, the application proceeded to publication, with L’Oréal itself eventually opposing the application based on likelihood of confusion and dilution, and later amending its opposition to add a claim that the applicant lacked the requisite bona fide intent.

At trial, L’Oréal came forth with substantial evidence in support of the fame of its brand, including testimony that:

  • the company had been selling products under the L’OREAL marks for more than 50 years;
  • the company’s annual sales exceeded $1 billion; and
  • the company spent hundreds of millions of dollars on advertising each year. 

Significantly, L’Oréal also made of evidence records that its advertising efforts had resulted in broad brand recognition of the L’OREAL marks. L’Oréal entered into evidence the yearly ranking of L’OREAL as one of the world’s '100 Top Brands', as well as voluminous unsolicited media coverage about L’Oréal, awards won by L’Oréal products and annual corporate image studies demonstrating brand awareness. The TTAB deemed this evidence “very impressive, and of a magnitude that would be the envy of any business entity in this country”.  Based on this evidence of record, the TTAB held that:

  • the L’OREAL marks are famous for cosmetics and personal skincare products; and
  • the fame of the L’OREAL marks weighed heavily in favour of a finding of likelihood of confusion. 

In what the TTAB deemed an “incredible statement”, the TTAB rejected the applicant’s argument that the fame of L’Oréal's marks, as limited to cosmetics, supported the position that the application should be allowed to proceed for beverages. The TTAB summarily rejected this argument, pointing out that the fame of a mark expands, not contracts, the scope of protection. Ultimately, based on the relevant likelihood of confusion factors, the TTAB found likelihood of confusion between the mark applied for and the registered L’OREAL marks.

Notably in this regard, the TTAB found that the applicant had acted in bad faith in filing its application for purposes of the likelihood of confusion test. Based on evidence that L’Oréal presented, over the years the applicant had filed application for a number of other well-known marks, including HEINEKEN, JACK DANIELS, CHANEL and BUDWEISER. The TTAB found that the applicant’s pattern of filing applications to register well-known marks supported a finding that the application at issue was filed in bad faith, with the intention to trade off L’Oréal's famous L’OREAL and L’OREAL PARIS marks.

Relying on the same pattern of filing applications for well-known marks, the TTAB ruled for L’Oréal on its claim that the applicant lacked a bona fide intent to use the mark applied for. The TTAB held that the applicant had produced no documents or other objective evidence that he actually intended to use the mark or had the experience needed to manufacture or sell aloe vera beverages. The applicant’s generalised, non-specific plans were “woefully deficient in showing a bona fide intent to use the mark”. The TTAB summarily rejected the applicant’s subjective testimony of his intent as proving nothing, holding that intent or lack thereof must be proven by objective, not subjective, evidence.

On both grounds - likelihood of confusion and lack of bona fide intent - the TTAB rejected the application. For this reason, the TTAB decided it had no need to reach the claim of dilution.

This decision highlights the types of evidence the TTAB will rely on for determining whether a mark is famous and for the bad-faith element of likelihood of confusion, as well as the relevance of repeated applications to register well-known marks of others as demonstrating a lack of bona fide intent.

Rochelle D Alpert and Leigha Weinberg, Morgan Lewis & Bockius LLP, San Francisco

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