Seacret Spa International LTD v. Lee et al

Filing 44

MEMORANDUM OPINION. Signed by District Judge James C. Cacheris on 3/8/16. (an appropriate order will issue)(gwalk, )

IN THE UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF VIRGINIA
Alexandria Division

SEACRET SPA INTERNATIONAL,
Plaintiff,
v.
MICHELLE K. LEE, et al.,
Defendants.

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M E M O R A N D U M

1:15cv405(JCC/IDD)

O P I N I O N

This matter is before the Court on Plaintiff Seacret
Spa International’s Motion for Summary Judgment [Dkt. 21], and
Defendants Michelle K. Lee and the United States Patent and
Trademark Office’s (“USPTO”; collectively, “Defendants”) Cross
Motion for Summary Judgment [Dkt. 25], and Defendants’ Motion to
Exclude the Opinion of Thomas J. Maronick [Dkt. 29].

For the

following reasons, the Court denies the Defendants’ Motion to
Exclude the Opinion of Thomas J. Maronick, denies the
Plaintiff’s Motion for Summary Judgment, and grants the
Defendants’ Cross Motion for Summary Judgment.
I. Background
Plaintiff Seacret Spa International (“Plaintiff”) is a
direct sales organization specializing in skin care products
containing ingredients or chemicals from the Dead Sea.

1

On

February 9, 2006, Plaintiff filed a federal trademark
application pursuant to Section 1(a) of the Lanham Act, 15
U.S.C. § 1051(a) for a stylized mark (the “SEACRET” mark) for
“products containing ingredients from the Dead Sea, namely, nonmedicated skin care preparations, namely moisturizers, facial
cleansers, facial peels, masks, lotions, creams, scrubs, soaps,
nail care preparations, hand creams, cuticle oils; after shave
in international class 3.”
omitted).)

(A561 [Dkt. 14] (Internal quotations

On August 7, 2006, the Trademark Examining Attorney

issued an Office Action refusing registration on the basis that
the stylized “SEACRET” mark was likely to be confused with
previously registered marks held by Proctor and Gamble Company.
(Id.)

These previously registered marks included the standard

character mark “SECRET” for the goods body spray, and a stylized
form of “SECRET” for the goods personal deodorant.

(Id.)

Plaintiff responded to the office action, and on April 20, 2007,
the examining attorney maintained the refusal and suspended the
application pending the outcome of another trademark application
filed by Plaintiff.

(Id.)

On June 29, 2012, the examining

attorney removed the application suspension and issued a final
refusal to register the “SEACRET” mark.

(A562.)

Plaintiff admits that the “SEACRET” mark and the
“SECRET” marks are phonetic equivalents, both pronounced as
“secret”.

(Pl.’s Mem. in Supp. [Dkt. 22] at 6.)
2

Plaintiff

sells its products primarily through a direct sales system or in
kiosks.

(Pl.’s Ex. A [Dkt. 23-2], ¶ 3.)

Plaintiff does not

market its products to traditional retailers or drug stores.
(Id.)

However Plaintiff’s products can be found through third

party online retailers. (A321-323, A342-344.)

Plaintiff’s

products range in price from $14.95 to $349.95.

However, the

Plaintiff’s application does not contain any restrictions as to
trade channels or price ranges.

(A561.)

II. Legal Standard
Expert opinion testimony is governed by Federal Rule
of Evidence 702, which provides:
A witness who is qualified as an expert by
knowledge, skill, experience, training, or
education may testify in the form of an opinion
or otherwise if: (a) the expert’s scientific,
technical, or other specialized knowledge will
help the trier of fact to understand the evidence
or to determine a fact in issue; . . .
Fed. R. Evid. 702.

Expert testimony is therefore admissible

under Federal Rule of Evidence 702 “if it concerns (1)
scientific, technical, or other specialized knowledge that (2)
will aid the jury or other trier of fact to understand or
resolve a fact at issue.”

Westberry v. Gislaved Gummy AB, 178

F.3d 257, 260 (4th Cir. 1999).

A district court’s decision with

respect to the admissibility of expert scientific testimony “is
always a flexible one, and the court’s conclusions necessarily
amount to an exercise of broad discretion guided by the
3

overarching criteria of relevance and reliability.”

Oglesby v.

Gen. Motors Corp., 190 F.3d 244, 250; see also Cooper v. Smith &
Nephew, Inc., 259 F.3d 194, 200 (4th Cir. 2001)(noting the
Supreme Court’s statement in Kumho Tire that trial judges “must
have considerable leeway in deciding in a particular case how to
go about determining whether particular expert testimony is
reliable”)(quoting Kumho Tire Co. v. Carmichael, 526 U.S. 137,
152 (1999)).

This is particularly true where there is no jury

trial to be conducted, as “[t]he gatekeeping function of the
court is relaxed where a bench trial is to be conducted, because
the court is better equipped than a jury to weigh the probative
value of expert evidence.”

Traxys North America, LLC v. Concept

Mining, Inc., 808 F. Supp.2d 851, 853 (E.D. Va. 2011).
Summary judgment is appropriate only where, on the
basis of undisputed material facts, the moving party is entitled
to judgment as a matter of law.

See Fed. R. Civ. P. 56; Celotex

Corp. v. Catrett, 477 U.S. 317, 322 (1986).

Where, as here,

neither party disputes the material facts, the case is ripe for
disposition on summary judgment.1

Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 248 (1998).

1

The parties in this case have agreed that so far as the Court
determines that there are disputed issues of facts, the Court
may resolve those disputes on the basis of the record before it.
(Scheduling Order ¶ 4.G.)
4

Section 21 of the Lanham Act, provides that an
applicant who is “dissatisfied with the decision” of the
Trademark Trial and Appeal Board can either “appeal to the
United States Court of Appeals for the Federal Circuit,” or can
seek a “remedy by a civil action” against the Director of the
USPTO in district court.

15 U.S.C. § 1071(a).

The parties may

not present new evidence bearing on registrability in an appeal
to the Federal Circuit, but they may present new evidence in a
“remedy by civil action” in a district court.

See Kappos v.

Hyatt, 132 S. Ct. 1690, 1701 (2012); Swatch AG v. Beehive
Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014).

“[W]here new

evidence is submitted, de novo review of the entire record is
required because the district court cannot meaningfully defer to
the PTO’s factual findings if the PTO considered a different set
of facts.”

Swatch, 739 F.3d at 155; see also Glendale Int’l

Corp. v. U.S. Patent & Trademark Office, 374 F.Supp. 2d 479,
484-85 (E.D. Va. 2005)(“[W]here new evidence is presented to the
district court on a disputed fact question, a de novo finding
will be necessary to take such evidence into account together
with the evidence before the board”).

However, “the district

court may, in its discretion, consider the proceedings before
and findings of the Patent Office in deciding what weight to
afford an applicant’s newly admitted evidence.”
F.3d at 155.
5

Swatch, 739

III. Analysis
The Court will first address the Defendants’ motion to
exclude the opinion testimony of Dr. Thomas J. Maronick then
turn to the parties’ cross motions for summary judgment.
Defendants argue that Dr. Maronick’s testimony should be
excluded because it is based on a study of the use of the
“SEACRET” mark in the marketplace rather than the uses described
in the application and is therefore irrelevant.
Exclude [Dkt. 30] at 6-7.)

(Def.’s Mem. to

The Court agrees that Dr. Maronick’s

reliance on marketplace usage and his failure to perform any
kind of survey on the issue of potential confusion between the
“SECRET” and “SEACRET” marks severely limits the probative value
of his testimony.

As the relevant inquiry in a registration

proceeding involves the mark and usage described in the
application rather than as they appear in the marketplace, both
the basis and the relevance of Dr. Maronick’s opinion are
suspect.

However, the parties here have agreed that any issues

of fact should be resolved at this stage on the basis of the
record before it, so the Court need not worry about any
potential for jury confusion.

After all, “[t]here is less need

for the gatekeeper to keep the gate when the gatekeeper is
keeping the gate only for himself.”
F.3d 1257, 1269 (11th Cir. 2005).

6

United States v. Brown, 415

Accordingly, the Court notes

the limited usefulness of Dr. Maronick’s testimony, but it
denies the defendants’ motion to exclude his opinion testimony.
Turning now to the cross motions for summary judgment,
because the Plaintiff has presented new evidence on the issue of
the likelihood of confusion between the “SEACRET” mark and the
“SECRET” marks, the Court will review the TTAB’s decision de
novo.

See, Swatch, 739 F.3d at 155.

The Lanham Act allows the

USPTO to refuse to register a mark when it “[c]onsists of or
comprises a mark which so resembles a mark registered in the
Patent and Trademark Office, or 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.”

15 U.S.C. §1052(d).

“[T]he TTAB evaluates likelihood

of confusion by applying some or all of the 13 factors set out
in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA
1973).”

B & B Hardware, Inc. v. Hargis Industries, Inc., 135

S.Ct. 1293, 1301 (2015).

In the related field of trademark

infringement lawsuits, the Fourth Circuit has provided the
following nine, non-exclusive, non-mandatory factors to aid in
the likelihood of confusion analysis:
(1) the strength or distinctiveness of the plaintiff’s
mark as actually used in the marketplace; (2) the
similarity of the two marks to consumers; (3) the
similarity of the goods or services that the marks
identify; (4) the similarity of the facilities used by
7

the markholders; (5) the similarity of advertising
used by the markholders; (6) the defendant’s intent;
(7) actual confusion; (8) the quality of the
defendant’s product; and (9)the sophistication of the
consuming public.
George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d
383, 393 (4th Cir. 2009).

However, the analogy between

trademark infringement and trademark registration is an
imperfect one.

While “the same likelihood of confusion standard

applies to both registration and infringement,” in the
registration context, it is not the actual usage of the mark in
the marketplace, but “[t]he usages listed in the
application . . . [which] are critical.”

B&B Hardware, 135

S.Ct. at 1300.
Section 7(b) of the Lanham Act provides that
registration on the Principal Register “shall be prima facie
evidence. . . of the registrant’s exclusive right to use the
registered mark in commerce on or in connection with the goods
or services specified in the certificate . . . .”
§1057(b)(emphasis added).

15 U.S.C.

Accordingly, this Court, like the

TTAB, must look to the full scope of usages disclosed within the
four corners of the application.

Any limitations on usage must

appear in the application, and “if an application does not
delimit any specific trade channels of distribution, no
limitation will be applied.”

B & B Hardware, 135 S.Ct. at 1300.

Consequently, for purposes of registration, “it is the mark as
8

shown in the application and as used on the goods described in
the application which must be considered, not the mark as
actually used.”

Id. (quoting 3 McCarthy, Trademarks and Unfair

Competition §20:15 (4th ed.), at 20-45).
Because the court must look to the mark and usages
described in the application in a registration proceeding,
evidence of the mark’s actual, narrower use in the marketplace
is irrelevant.

If an applicant wishes to narrow the channels of

trade or price range covered by his proposed trademark
registration, he must re-file or amend the application.
Evidence of a narrower actual usage than the usage described in
the application cannot itself narrow the scope of the
application.

Additionally, an applicant cannot limit the

coverage of a third party’s pre-existing registration by
introducing evidence of actual use in an ex-parte registration
application proceeding.2
A.

The Strength or Distinctiveness of the Senior
Mark as Actually Used in the Marketplace

In a registration action, the senior mark is not the
plaintiff’s mark, but the pre-existing registered trademarks
already in the Register.

The relevant senior marks in this case

are Proctor and Gamble’s registered trademarks for “SECRET”,
2

Section 14 of the Lanham Act, 15 U.S.C. § 1064 provides for
cancellation proceedings against the registrant to limit the
scope of an existing registration.
9

both in stylized form and as a standard character mark.
Plaintiff concedes that the “SECRET” marks are distinctive and
established in the marketplace for personal deodorant and body
spray.

(Pl.’s Mem. in Supp. at 12.)

This factor therefore

weighs against registrability of the plaintiff’s mark in this
case.
B.

Similarity of the Two Marks to Consumers

In considering the similarity of the marks, the Fourth
Circuit has instructed courts to “focus on whether there exists
a similarity in sight, sound, and meaning which would result in
confusion.”

George & Co., 575 F.3d at 396.

The similarity of

two marks ought not to be evaluated by a side-by-side comparison
of the marks, but rather a consideration of the marks “in light
of the fallibility of memory.”

In re St. Helena Hosp., 774 F.3d

747, 751 (Fed. Cir. 2014); see also, Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)(“The
proper test is not a side-by-side comparison of the marks, but
instead whether the marks are sufficiently similar in terms of
their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the
parties”).
With respect to sound, Plaintiff admits that the
“SEACRET” mark and the “SECRET” marks are phonetic equivalents.
(Pl.’s Mem. in Supp. at 12.)

Spoken aloud, there is no possible
10

way to identify between the two marks.

The maddening confusion

resulting from this identical pronunciation will be readily
apparent to anyone attempting to read this opinion aloud.
Plaintiff argues that the presence of an “A” in the
middle of the word, and a design element mimicking a wave
running through the middle of the “E” and the “A” differentiate
the “SEACRET” mark from the “SECRET” mark with respect to sight.
(Pl.’s Mem. in Supp. at 13.)

This argument runs aground on the

fact that one of the “SECRET” marks is registered as a standard
character mark.

“If the registrant . . . obtains a standard

character mark without claim to any particular font, style, size
or color, the registrant is entitled to depictions of the
standard character mark regardless of font style, size, or color
. . . .”

Citigroup Inc. v. Capital City Bank Group Inc., 637

F.3d 1344, 1353 (Fed. Cir. 2011).

Because the “SECRET” mark is

registered as a standard character mark, its registration
extends to a rendition of the word “secret” in the same font as
the “SEACRET” mark, complete with a wave design element in the
middle of the “E”.

The TTAB also found, and this Court agrees,

that embedding an “A” between the letters “SE” and “CRET” does
not significantly change the appearance of the word.

(A597).

Because neither the font and design elements nor the addition of
a central “A” greatly differentiates the “SEACRET” mark from the

11

marks covered by the “SECRET” registration, the Court finds that
the two marks are similar in sight to the point of confusion.
Finally, the Court turns to meaning.

Plaintiff

contends that as the “SEACRET” mark begins with the word “sea”
it has a different meaning than the “SECRET” mark, conjuring up
images of the sea in the consumer.

While “SEACRET” seeks to

invoke the traditional link between moisture as the essence of
wetness and wetness as the essence of beauty, Plaintiff
acknowledged before the TTAB that the “SEACRET” mark also
“conjure[s] up a perception of ‘secret ingredients.’”

(A. 599.)

Plaintiff suggests that the accompanying tag line “minerals from
the dead sea”, used in conjunction with the sale of the goods,
adds to the theme of a nautical origin.
14.)

(Pl.’s Mem. in Supp. at

However, the tag line “minerals from the dead sea” does

not appear in Plaintiff’s application for registration.

Because

the tag line does not appear in the application, it is
irrelevant to the question of similarity at the registration
stage.

See In re Shell Oil Co., 992 F.2d 1204, 1208 at n.4

(Fed. Cir. 1993); In re H.J. Seiler Co., 289 F.2d 674, 675 (CCPA
1961).

As the TTAB found, the “SEACRET” mark is clearly a play

on the words “sea” and “secret”, conjuring images of both
secret, mysterious ingredients and the sea.

This Court agress,

and finds that the “SEACRET” mark, like the “SECRET” marks, has
connotations of secrecy or mystery as one of its central
12

commercial meanings.

Because the “SEACRET” and “SECRET” marks

are similar to the point of confusion with regards to sight,
sound, and meaning, the similarity of the two marks to consumers
weighs against registration.
C.

The Similarity of the Goods or Services That the
Marks Identify

In addressing the similarity of the goods or services
that the marks identify, “the goods in question need not be
identical or in direct competition with each other.”
Co., 575 F.3d at 397.

George &

Indeed, “[b]ecause confusion may arise

arise even where products are merely related, the court is to
consider whether the public is likely to attribute the products
and services to a single source.”

Renaissance Greeting Cards,

Inc. v. Dollar Tree Stores, Inc. 227 Fed.App’x. 239, 244 (4th
Cir. 2007).
The goods listed in the application for the “SEACRET”
mark are not in direct competition with the goods covered under
the “SECRET” marks.

The “SEACRET” application is for the goods

“[p]roducts containing ingredients from the Dead Sea, namely,
non-medicated skin care preparations, namely moisturizers,
facial cleansers, facial peels, masks, lotions, creams, scrubs,
soaps, nail care preperations, hand creams, cuticle oils; after
shave in international class 3.”

(A651)

The “SECRET” marks are

for the goods “body spray” in international class 3, and
13

“personal deodorant” in international class 3.

In rough

summation, the “SEACRET” application covers skin care products,
while the “SECRET” registrations cover deodorant and body spray.
Clearly, these goods are not interchangeable or in competition
with each other.

However, more generally, and as Plaintiff

itself points out, these goods are all personal hygiene products
capable of being applied to the skin.

(Pl.’s Mem. in Supp. at

15.)
Courts have approved the consideration of other,
third-party registrations covering both the goods described in
the application and the goods described in the pre-existing
registration to aid in determining whether a specific set of
goods are so related that the public might attribute them to a
single source.

See, e.g., In re Mucky Duck Mustard Co., 6 USPQ

1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir.
1988).

In this case the TTAB pointed to at least fourteen

registered marks which covered both skin care lotions or creams
and deodorant or body spray.

After Plaintiff filed this civil

action, the USPTO submitted an additional 120 third-party
registrations which included goods covered by both the “SEACRET”
application and the “SECRET” registration.
B [Dkt. 26-4].)

(Fletcher Decl. Ex.

Plaintiff’s evidence does nothing to address

“whether the public is likely to attribute the products and
services to a single source.”

Renaissance Greeting Cards, 227
14

Fed.App’x. at 244.

Rather, Plaintiff’s evidence tends to show

only that the public is unlikely to mistake their skin care
products for deodorant.

As the abundance of trademark

registrations covering both deodorant and skin care products
suggests, Plaintiff’s products and the goods covered by the
“SECRET” trademarks are related products, both being toiletries.
As these products are often made by the same manufacturer, there
is a high probability that a consumer might attribute both of
them to a single source.

Therefore, this factor weighs against

registration.
D.

Similarity of the Facilities Used by the
Markholders

When considering the similarity of the facilities used
by the markholders, “the key question is whether both products
[are] sold in the same channels of trade.”

Rosetta Stone Ltd.

v. Google, Inc. 676 F.3d 144, 155 (4th Cir. 2012)(internal
quotation marks omitted).

In the registration context, the

similarities in channels of trade must be analyzed based on the
channels of trade contemplated by the application.
Hardware, 135 S.Ct. at 1300.

See B & B

Any limitations on usage must

appear in the application, and “if an application does not
delimit any specific trade channels of distribution, no
limitation will be applied.”

Id.

citations omitted).
15

(internal quotations and

Plaintiff’s application contains no limitations as to
specific channels of trade.

Accordingly, the fact that

Plaintiff currently operates primarily through a direct
marketing business model with additional sales through kiosks
while the “SECRET” mark is primarily sold through major retail
stores is of no value in assessing the likelihood of confusion
under the application.

The application contains no limitations

on the channels of trade to be used in connection with the
“SEACRET” mark, so the TTAB and this Court must assume that it
contemplates the use of the “SEACRET” mark in all channels of
trade, including those described in the “SECRET” registration
and actually used by the “SECRET” mark.

Accordingly, while this

factor does not weigh very heavily in the Court’s decision, it
weighs against registration.
E.

Similarity of Advertising Used by the Markholders

Plaintiff asserts that because its business model is
primarily focused on direct sales and it does little to no
traditional retail market advertising, this factor should weigh
heavily against a likelihood of confusion.
at 18.)

(Pl.’s Mem. in Supp.

This argument again ignores the fact that a

registration proceeding deals with the mark as described and
limited in the application, not as presently used in the
marketplace.

See B & B Hardware, 135 S.Ct. at 1300.

Plaintiff’s current advertising strategy is based upon their use
16

of direct sales trade channels.

(Pl.’s Mem. in Supp. at 18.)

However, the application contains no limitations to specific
channels of trade, and Plaintiff could adopt a more conventional
advertising strategy tomorrow and remain within the four corners
of the application.

As discussed above, when the application

does not include any limitations to specific channels of trade,
none will be implied.

Accordingly, the current dissimilarity in

advertising between the Plaintiff and P&G is of irrelevant to
the determination of the likelihood of confusion under the
application.
F.

Defendant’s Intent

This factor is far more applicable in actions for
trademark infringement than it is in a registration proceeding.
Generally, “[i]f there is intent to confuse the buying public,
this is strong evidence establishing likelihood of confusion,
since one intending to profit from another’s reputation
generally attempts to make his signs, advertisements, etc., to
resemble the other’s so as to deliberately induce confusion.”
Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1535 (4th Cir.
1984).

Neither party alleges that Plaintiff acted in bad faith

in creating the “SEACRET” mark.

However, while this factor can

be extremely probative in infringement cases, it is rarely
relevant to the likelihood of confusion in registration

17

proceedings.

Accordingly, the Court will not accord any

significant weight to this factor in this case.
H.

Actual Confusion

While evidence of actual confusion is strongly
indicative of a likelihood of confusion, “[p]roof of actual
confusion is unnecessary; the likelihood of confusion is the
determinative factor.”

Shell Oil Co. v. Commercial Petroleum,

Inc., 928 F.2d 104, 107 (4th Cir. 1991)(internal quotation marks
omitted).

It is true that “the absence of any evidence of

actual confusion over a substantial period of time . . . creates
a strong inference that there is no likelihood of confusion.”
CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263,
269 (4th Cir. 2006).

However, a lack of evidence of actual

confusion should be taken with a note of caution, especially
when it appears in an ex parte registration application
proceeding like the case at hand.

In re Majestic Distilling Co,

Inc., 315 F.3d 1311, 1317 (Fed. Cir. 2003).

Neither the TTAB

nor the Court can rely on the party seeking to register their
mark to search out and report examples of actual confusion, when
doing so would be to their obvious detriment.

Accordingly, the

uncorroborated claims made by Plaintiff that “there is no
evidence that there has been actual confusion” will be given
little weight by the Court.

(Pl.’s Mem. in Supp. at 19); See In

re Majestic, 315 F.3d at 1317 (agreeing that “Majestic’s
18

uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”).

The Court finds

that the lack of any evidence of actual confusion weighs against
a likelihood of confusion, but due to the ex parte nature of
this registration application proceeding, this factor is of
extremely limited value and it does not outweigh the other
factors discussed above.
I.

Quality of the Defendant’s Product

This factor typically deals with situations involving
cheap alternatives or knock offs of earlier established goods
and brands.
J.

Both parties agree it is not relevant in this case.
Sophistication of the Consuming Public

Normally, “buyer sophistication will only be a key
factor when the relevant market is not the public at-large.”
Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 466 (4th Cir.
1996).

Plaintiff contends that because their products currently

on the market are generally high price point goods marketed
towards knowledgeable consumers through direct marketing, this
factor should weigh against a likelihood of confusion.
Mem. in Supp. at 21.)

(Pl.’s

Once again, Plaintiff loses sight of the

fact that in this context, it is the application, not the
current state of the marketplace, which must be examined.

The

“SEACRET” application contains no meaningful limitations as to
the kinds of consumers targeted, nor does the “SECRET”
19

registration.

Accordingly, it is presumed that the goods are

offered to all normal potential customers.

Coach Servs., 668

F.3d at 1370.
Skin care products are widely bought, and “do not
require much consumer sophistication.”

In re Mighty Leaf Tea,

601 F.3d 1342, 1346 (Fed. Cir. 2010).

The fact that some of the

“SEACRET” products are sold for prices as high as $350 does not
itself establish that the consumer of “SEACRET” products is
sophisticated.

Plaintiff admits that some of its products sell

for as low as $14.95.

(Pl.’s Mem. in Supp. at 21.)

Where a

mark targets both highly knowledgeable and average consumers,
“the issue of likelihood of confusion will usually revolve
around the less knowledgeable consumer.”
and Unfair Competition § 23:100 (4th ed.).

4 McCarthy, Trademarks
Because the

application contains no clear limitations as to the target
market for goods carrying the “SEACRET” mark and the goods are
in fact sold for prices as low as $14.95, the Court finds that
Plaintiff is targeting the public at-large, and will give little
weight to buyer sophistication in its analysis of the likelihood
of confusion.
K.

The Totality of the Factors Indicate a Likelihood
of Confusion

For the reasons discussed above, the Court finds that
the first four factors identified by the Fourth Circuit as
20

bearing on the likelihood of confusion, namely the strength or
distinctiveness of the senior mark as actually used in the
marketplace, the similarity of the two marks to consumers, the
similarity of the goods or services that the marks identify, and
the similarity of the facilities used by the markholders, all
weigh in favor of a likelihood of confusion.

The Court further

finds that the similarity of the advertising used by the
markholders, the defendant’s intent, the quality of the junior
markholders product, and the sophistication of the consuming
public do not weigh significantly either for or against a
finding of likelihood of confusion in this case.

Finally, the

Court finds that while the lack of evidence of actual confusion
weighs slightly against finding a likelihood of confusion, the
ex parte nature of the registration proceeding in this case
renders that factor unpersuasive.

Having considered all of the

factors, the Court finds the strong similarities between the two
marks in sight, sound, and meaning as well as the similarity of
the goods identified in this case to be the most persuasive
factors.

The Court agrees with the TTAB that the mark described

by Plaintiff’s application is sufficiently similar to the mark
covered by the “SECRET” registration “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.”

21

15 U.S.C.

§1052(d).

Accordingly, the Court grants Defendants’ Cross

Motion for Summary Judgement.
IV. Conclusion
For the foregoing reasons, the Court denies the
Defendants’ motion to exclude the testimony of Dr. Thomas J.
Maronick, denies the Plaintiff’s Motion for Summary Judgment and
grants the Defendants’ Cross Motion for Summary Judgment.

The

ruling of the TTAB denying plaintiff’s application for
registration of the “SEACRET” mark is therefore affirmed.

An

appropriate order will issue.

March 8, 2016
Alexandria, Virginia

/s/
James C. Cacheris
UNITED STATES DISTRICT COURT JUDGE

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