Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SEBASTIAN INTERNATIONAL, INC.
v.
HASK TOILETRIES, INC.
October 23, 1989
Hearing: August 24, 1989
Opposition No. 74,633 to application Serial No. 584,754, filed February 26, 1986
Spensley Horn Jubas & Lubitz, for Sebastian International, Inc.
Alan H. Levine, for Hask Toiletries, Inc.
Before Rooney, Simms and Cissel
Members
Members
Sebastian International, Inc., a California corporation, has opposed the application of Hask Toiletries, Inc. a New York corporation, to register the mark STIFF SPRITZ ("SPRITZ" disclaimed) on the Principal Register for hair conditioner. [FN1] Opposer asserts that applicant's mark so resembles the marks SHPRITZ and SHPRITZ FORTE, previously used and registered by opposer for hair finishing spray and hair spray, respectively, as to be likely to cause confusion, to cause mistake or to deceive. [FN2]
Applicant has denied the essential allegations of the opposition and has asserted that the term "spritz" or SHPRITZ, the only similarity between the marks of the parties, is so widely used in connection with trademarks for hair care toiletries that it is not subject to exclusive appropriation by anyone. Applicant has also filed a counterclaim to cancel the registration of the mark SHPRITZ. In this counterclaim, applicant asserts that it has been a distributor of personal care products including hair care toiletries since 1950; that applicant began using the trademark STIFF SPRITZ on February 12, 1986 for conditioners in a container with an atomizer for spraying; that, upon application to register this mark, the Examining Attorney required a disclaimer of the term "SPRITZ"; that the English word "spritz" means "spray" or "squirt" and is the phonetic equivalent of the German term "spritz," which is a combining form meaning "spray"; that opposer sought registration of SHPRITZ under Section 2(f) of the Act; that opposer is therefore estopped from denying that the word "shpritz" is descriptive for products sprayed on the hair; that "shpritz" is the common descriptive or generic name for a hair spray product and that applicant is entitled to use the term "spritz" as a part of its trademark or otherwise. In a reply to the counterclaim, Sebastian has denied the essential allegations of the counterclaim.
The record of this case consists of testimony (and exhibits) taken by both parties; copies of the files of Sebastian's pleaded registrations as well as a third-party application seeking to register the mark FIRM & FAST SPRITZ, relied upon by Sebastian's notice of reliance; dictionary definitions, excerpts from the NEXIS computer search system, and Sebastian's answer to one of Hask's interrogatories, all relied upon by Hask's notices of reliance; and the files of Hask's application and Sebastian's registration sought to be cancelled. The parties have filed briefs and an oral hearing of argument has been held.
*2 According to the testimony of John Cusenza, a/k/a John Sebastian, opposer's president, in the early 1970s Mr. Cusenza, who had owned and operated beauty salons and beauty schools, decided to get into the business of making and selling hair care products. These products were to be sold to the beauty salon and beauty school trade. In 1974, Sebastian began selling a hair finishing spray under the mark SHPRITZ. This spray or fixative is still sold, with sales between July 1984 and October 1984 totaling more than $700,000. In 1982 or 1983, opposer began selling a more powerful hair finishing product under the mark SHPRITZ FORTE.
This product soon surpassed the original product in sales. According to Mr. Cusenza, The SHPRITZ FORTE product garners approximately three times the sales revenues of the original product. Both products have been advertised and promoted at hair care trade shows, at seminars, in trade and consumer magazines, by posters and as give-away items. Sebastian has also pioneered the use of videotapes in the hair care industry to market its products and to educate consumers in their proper use. Opposer primarily sells its products in beauty salons including those run by department stores. Mr. Cusenza also testified that some of his products may also be found in some drugstores, although he does not distribute them to those outlets. Sebastian has also taken the testimony of a consultant who designed and supervised a survey of professional hair stylists conducted in three major metropolitan areas (Philadelphia, Minneapolis and San Francisco) in randomly selected salons in those cities. This survey was conducted in response to litigation between Sebastian and a third party. Among other things, this survey assertedly demonstrates that of those familiar with the SHPRITZ product (about half), 81 percent named Sebastian as its manufacturer.
According to Sebastian's testimony, beginning around 1984 other companies began using the phonetically equivalent term "spritz" on competing products (Cusenza dep., 47-48).
Hask introduced its STIFF SPRITZ hair conditioner in February 1986. According to Joseph Heit, applicant's executive vice president, this name was chosen to indicate that the product is a "spritz" and to suggest the resulting stiff appearance of the hair after use. Hask has distributed 10,000 catalog or selling sheets to the major drugstore chains and to beauty wholesalers or distributors who purchase applicant's product for ultimate sale in health and beauty aid stores and through local drugstore chains. Hask has sold approximately 30,000 bottles of its hair spray amounting to over $400,000 in sales at wholesale.
According to Mr. Heit's testimony, "spritz" is a generic term designating the product category of a hard-holding hair spray which gives a very stiff and firm appearance. He testified that there are "[m]any, many spritzes on the market and have been for many years." Heit dep., 5. Hask's record also includes evidence that the term "spritz" has been used by numerous third parties either as a part of a trademark or in a descriptive or generic sense. For example, Mr. Heit purchased a number of third-party products such as "STYLE Super Hold Spritz & Shine," "JHIRMACK PHYTOMIN SPRITZ," "STIFF STUFF Styling Spritz Super Hold," "SPIKEY SPRITZ Fastest Drying Super Holding Styling Spray" and "HI-PRO-PAC SUPER SPRITZ Extra Firm Hold Professional Salon Formula Finishing Spray." In addition, Hask has relied upon an interrogatory response of Sebastian listing 31 hair spray products which use the word "spritz" either as a part of a trademark or otherwise. These include "GLEMBY Styling System Spritz," "DHEMARI Spritz," "BAIN DE TERRE Spritz Hair Spray," "JHERI REDDING Directional Design Spritz," "IMPACT Volume Retention Spritz" and "ZOTOS Design Freedom Super Hold Spritz." Hask has also made of record copies of advertisements of products from L'Oreal and Clairol. These products bear the names L'OREAL STUDIO LINE Mega Spritz, L'OREAL STUDIO LINE Modeling Spritz, CLAIROL CONDITION Spritz Moisturing Formula and CLAIROL CONDITION Spritz Sculpting Formula. Hask has also relied upon dictionary definitions of "spritz" [FN3] and numerous references to the term "spritz" from the NEXIS computer database search system. [FN4]
*3 Because Hask has sought cancellation of one of the registrations pleaded by Sebastian, we shall treat the merits of the counterclaim before proceeding to the issue of likelihood of confusion raised in Sebastian's opposition.
Genericness of "Spritz"
As noted above, Hask has sought cancellation of the registration of the mark SHPRITZ for hair finishing sprays. This registration was issued under Section 2(f) of the Act. In other words, during the course of the examination of Sebastian's application, Sebastian in effect admitted that the term sought to be registered was not inherently distinctive for its product but had acquired a secondary meaning. See General Foods Corp. v. MGD Partners, 224 USPQ 479, 485 (TTAB 1984) and cases cited therein.
We have carefully examined this record and believe that Hask has demonstrated that the word "spritz" as a noun is a category of hair spray and that the registration of the asserted mark SHPRITZ, admittedly the phonetic equivalent of the word "spritz" (Sebastian's brief, 3, 6 and 8), should be cancelled. See In re The Coney Island Bredzel Co., 199 USPQ 45 (TTAB 1978) (BREDZEL, phonetic equivalent of German term "brezel," held not capable of distinguishing pretzels); In re Jacqueline Cochran, 196 USPQ 715 (TTAB 1977) (AIROMATIQUE, misspelling of French word "aromatique," not capable of distinguishing toilet water); In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967) (KABA, a corruption or misspelling of "kava," Serbian and Ukrainian word for coffee, held incapable of distinguishing such goods) and In re Monarch Wine Co. of Georgia, 117 USPQ 454 (Com'r Pats.1958) (VINKA held apt name for wine in that Polish word "winka," a diminutive of "wino," is pronounced "vinka"). [FN5] The fact that some third parties have agreed to cease use of the word "spritz" is not persuasive of a contrary holding. Of course, as a generic term, no amount of promotion or sales can make this word a trademark. Weiss Noodle Company v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (CCPA 1961).
Likelihood of Confusion
We agree with opposer that the goods of the parties are closely related--hair sprays and hair conditioners. Both products are designed to hold the hair firmly in place. Moreover, since neither the application nor opposer's registrations contain any restriction with respect to channels of trade or classes of purchasers, we must assume that the goods of the parties are sold in some of the same retail outlets, such as drugstores and beauty salons. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed.Cir.1987). Also, being relatively inexpensive products, these goods are most likely purchased with relatively little care.
*4 Our decision on likelihood of confusion necessarily turns on a comparison of the marks of the parties. The only similarity between opposer's remaining pleaded mark and applicant's is the word "SHPRITZ" or "SPRITZ," terms which we find to be generic as applied to hair sprays. Comparing the mark SHPRITZ FORTE and applicant's mark STIFF SPRITZ in their entireties while giving less weight, as we must, to the generic word or its phonetic equivalent, we find that applicant's mark is sufficiently different from opposer's mark in sound, appearance and meaning that confusion is unlikely. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985). In this regard, we point out that each mark contains different words which suggest a property or feature of the respective products and do not look or sound alike and have different meanings. In addition, both of the words in applicant's mark began with the letter "S" and the suggestive term in opposer's mark follows, rather than precedes, the generic word. These marks are sufficiently different to avoid the likelihood of confusion.
Decision: The counterclaim for cancellation is granted and Registration No. 1,261,398 of the mark SHPRITZ will be cancelled; and the opposition is dismissed.
L.E. Rooney
R.L. Simms
R.F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 584,754, filed February 26, 1986, claiming use since February 12, 1986. In the application it is indicated that "The English translation of the German word "spritz" is "spray."
FN2. Registration No. 1,261,398, issued December 20, 1983, under Section 2(f) of the Trademark Act; and Registration No. 1,325,305, issued March 19, 1985.
FN3. For example, as a noun, "spritz" is defined in The Random House Dictionary of the English Language (1987) as "a quick, brief spray of liquid; squirt".
FN4. For example, in addition to such usages as "spritz of water" and "spritz of lemon juice," the term is used in the following contexts:
... primarily because of the continuing sales vitality in the hair sprays category, which is now expanding as a result of the spritz products from leading manufacturers. (Supermarket Business, April 1988)
*****
Alberto this year introduced Bold Hold, a three-item line with gel, spritz and hair spray that quickly moved the company into the latest hair-styling trend, spiked hair. (Advertising Age, April 18, 1988)
*****
... step further with recent launchings of spritzes, which in most cases are merchandised with hair spray.
At Rosauers Supermarkets, Spokane, spritz sales have risen 10-15% over the past year, according to Trevor Smith, general merchandise buyer/merchandiser. He attributed the ...
... buy several products that perform the same function but differ significantly in price. "They may buy a $3 spritz, while at the same time stocking up on another product, which may be on sale for 89¢." (Supermarket News, March 21, 1988)
*****
... Hair care had more than its share of stars. Hair spray continued its advance, up 13%. In hair styling the style/spritz segment skyrocketed 94% and gels and jumped 48%. These two segments combined represent about 40% of all supermarket dollar ...
(Progressive Grocer, March 1988)
*****
The Bold Hold line includes a spritz styling spray and fixing gel. Although Bold Hold is a unisex styling line, Alberto-Culver is aiming an ...
(Crain's Chicago Business, October 19, 1987)
*****
*****
... several new "Flex" products this year, including "ultimate hold" body building hair sprays, and a new finishing spritz and "Sun & Sport" hair spray, and has relaunched its styling mousses as alcohol-free products.
( Soap--Cosmetics--Chemical Specialties, October 1987)
***
... Inc. is introducing two new styling products: Styling Fix Ultimate Hold Spray and Styling Fix Ultimate Hold Spritz. The products are designed to strengthen Sassoon's presence as a salon-style line for the mass consumer.
(Ad Day, August 20, 1987)
FN5. The fact that there is no category "spritz" listed in the beauty salon trade publication known as the Green Book, while considered, is not conclusive on this question. Rather, we believe that the evidence Hask has submitted demonstrates by a preponderance of the evidence that the term is generic.