perfectly posh, llc jacqueline abner-pongratz

This Opinion is Not a Precedent of the TTAB

Mailed: June 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board _____

Perfectly Posh, LLC

v. Jacqueline Abner-Pongratz

_____

Opposition No. 91241488 _____

H. Matthew Horlacher of Holland & Hart LLP

for Perfectly Posh, LLC

William E. O’Brien of Law Office of William E. O’Brien LLC for Jacqueline Abner-Pongratz.

_____ Before Bergsman, Adlin and English,

Administrative Trademark Judges. Opinion by English, Administrative Trademark Judge:

Jacqueline Abner-Pongratz (“Applicant”) seeks to register on the Principal

Register the standard character mark POSH GOTH1 and the design mark

1 Application Serial No. 87609820, filed September 15, 2017, based on a claim of an intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Citations are to the TTABVUE docket entry and electronic page numbers where the document or testimony appears. Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).

Opposition No. 91241488

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,2 both for “bath soaps; cosmetic preparations for body care;

cosmetics; perfumes” in International Class 3.

In its consolidated notice of opposition, Perfectly Posh, LLC (“Opposer”) alleges

that it is “a leading distributor of naturally based pampering skincare, cosmetic, and

scented products throughout the United States,” and that it sells “through its website

at www.perfectlyposh.com and through Perfectly Posh Independent Consultants[.]”3

As grounds for opposition, Opposer alleges lack of bona fide intent to use, fraud, and

priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15

U.S.C. § 1052(d), based on:4

2 Application Serial No. 87646907, filed October 16, 2017, based on a claim of an intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 3 Consolidated Notice of Opposition, 1 TTABVUE 5-6, ¶¶ 1 and 3. 4 Opposer also alleges in its consolidated notice of opposition and argues in its brief that Applicant did not own the involved marks when she filed her applications. Non-ownership, however, is not available as a claim against applications, like the ones here, filed based on intent to use. Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, *4-5 (TTAB 2019) (explaining that a non-ownership claim is not available against an application filed under Section 1(b) of the Trademark Act because “[t]here is no statutory requirement that the filer of an intent-to-use application be the owner of the mark at the time of filing of the intent-to-use application.”). See also Hole In 1 Drinks, Inc. v. Latjay, 2020 USPQ2d 10020, *5 (TTAB 2020) (same). Accordingly, we have not considered the issue of non-ownership. In addition, Opposer argues in its brief that it owns a “family” of POSH-formative marks. 18 TTABVUE 18 and 33-36. Opposer, however, did not plead a family of marks. Nor have such rights been tried by implied consent. Accordingly, we have not considered Opposer’s arguments based on a family of marks. See Productos Lacteos Tocumbo S.A. de C.V. v.


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• Prior use and registration of the standard character mark PERFECTLY

POSH5 and the design mark ,6 both for “personal care

products, namely, hand lotion, hand balm, hand soap, body lotion, body butter,

body balm, body soap, body mist spray, face lotion, face oils, face creams,

exfoliating masks, shampoos, hair conditioners, massage cream, massage

balm, massage oil, bath fizzies, bath beads, bath salts, non-medicated foot

cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip

balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes,

essential oils for personal use, essential oils for aromatherapy use, lip

exfoliators, mineral powders for use as cosmetic makeup, mineral makeup,

aromatic oils, non-medicated aromatic body mists, aromatic lotions, aromatic

bath salts, nonmedicated aromatic bombs for the skin and body for adding color

and scent to bath water, bath milks, beauty milks, cosmetic milks for the skin

Paleteria La Michoacana, Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (“Petitioner’s reference to a family of marks in its brief will not be considered because this claim was neither pleaded nor tried by the parties.”). 5 Registration No. 4348174; registered June 4, 2013; partial Section 8 accepted and Section 15 acknowledged. 6 Registration No. 4452650; registered December 17, 2013. The registration contains the following description: “The mark consists of the wording ‘perfectly posh’ surrounded on each end by a curly bracket and asterisk.” Color is not claimed as a feature of the mark. This registration also covers goods in Class 5, namely, “scented and perfumed air and room freshener sprays and fresheners.”


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and body” in International Class 3; and “rendering technical assistance in the

nature of advertising, marketing, and promotional services by developing

advertising campaigns for web pages and print media, for the purpose of

assisting in the establishment and operation of distributorships, person to

person, wholesale and retail selling services in the field of personal care

products” in International Class 35.

• Prior use of the design mark for the goods and services

listed above;7 and

• Prior use of the marks POSH GOTH8 and PERFECTLY POSH GOTH

through use of the domain name poshgoth.po.sh, the username

PERFECTLY POSH GOTH on YouTube, and #POSHGOTH on

Instagram, Twitter, and Facebook by Andrea Lipomi, Opposer’s

independent consultant and predecessor-in-interest.

7 Application Serial No. 87689357, filed November 17, 2017 based on a claim of first use and first use in commerce in October 2011. The application contains the following description of the mark: “The mark consists of the wording ‘PERFECTLY POSH’ with two asterisks, with the wording ‘PERFECTLY’ underlined, all within a shaded circle.” Color is not claimed as a feature of the mark. 8 In its consolidated notice of opposition, Opposer refers to its mark both as POSHGOTH, without a space, and POSH GOTH, with a space. For consistency, we use POSH GOTH, with a space, as Opposer primarily has done in its brief.


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In her answer, Applicant denies the salient allegations in the consolidated Notice

of Opposition and, under the heading “Affirmative Defenses,” pleads: (1) failure to

state a claim, laches, acquiescence, estoppel, waiver, unclean hands and fraud; (2)

Opposer does not have priority, Opposer’s marks “are not valid trademarks,” and

“Opposer cannot claim exclusive rights in Opposer’s marks and/or has abandoned or

lost its rights in those marks” because Opposer cannot show continuous use or that

its marks have developed significant goodwill and because Opposer has “misused its

marks”; and (3) Opposer’s marks are “entitled to only a very narrow scope of

protection” because “‘POSH’ is a weak term[.].”9 Applicant did not pursue the

affirmative defenses of laches, acquiescence, or waiver so we deem these defenses

waived. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419,

1422-23 n.7 (TTAB 2014); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107

USPQ2d 1750, 1752 n.6 (TTAB 2013). Failure to state a claim is not an affirmative

defense. Applicant’s allegations of “abandonment” in item 2 are impermissible

collateral attacks with respect to Opposer’s registered marks in the absence of a

counterclaim. Trademark Rule 2.106(b)(3)(ii) (attack on validity of pleaded

registration must be made by counterclaim or separate petition to cancel); see also,

e.g., Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626

n.1 (TTAB 2007) (absent a counterclaim, Board cannot consider arguments against

the validity of a pleaded registration). Accordingly, we have considered the

allegations in item 2 only to the extent they amplify Applicant’s denials with respect

9 Answer, 4 TTABVUE 5-7.


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to Opposer’s pleaded common law marks. We treat the “affirmative defense” in item

3 as an amplification of Applicant’s denial that her marks are likely to cause

confusion with Opposer’s marks.

For the reasons explained below, we dismiss the consolidated opposition.10

I. The Record and Evidentiary Objections

The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), Applicant’s application files.

Opposer introduced the testimony declarations of LaRane Kasteler, Opposer’s

Department Head for Compliance and Regulatory, and Andrea Lipomi, an

Independent Consultant for Opposer and Opposer’s predecessor-in-interest,11 as well

10 The case is fully-briefed, but Opposer has moved to strike Applicant’s brief on grounds that it “contains no table of contents, index of cases, or description of the record[.]” 21 TTABVUE 6. Based on the particular facts here, Opposer’s motion is granted. Trademark Rule 2.128(b), 37 C.F.R. § 2.128(b). Accordingly, we have not considered Applicant’s brief or Opposer’s rebuttal thereto (except for that portion pertaining to the motion to strike). 11 Declaration of LaRane Kasteler, 12 TTABVUE; Declaration of Andrea Lipomi, 13 TTABVUE.


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as a notice of reliance on:12

• Printouts from the USPTO Trademark Status and Document Retrieval (“TSDR”) showing the current status and title of Opposer’s pleaded registrations and pleaded application;

• Screenshots from Applicant’s website and Twitter, Facebook and Etsy pages; and

• Applicant’s responses to Opposer’s interrogatories and document requests.

Applicant introduced her own declaration13 and a notice of reliance on the

following documents:14

• Screenshots from Applicant’s Facebook page;

• Email receipts from Facebook, Amazon, and Shopify to Applicant;

• Domain name registration receipt for poshpoisons.com;

• Opposer’s responses to Applicant’s interrogatories;

12 Both parties also filed under notice of reliance documents authenticated through testimony. The better practice would have been to have attached the authenticated documents to the appropriate declaration(s). Neither party objected to the manner in which documents were submitted so we have not excluded any documents that may not have been properly introduced. Morgan Creek Prods., Inc. v. Foria Int’l, 91 USPQ2d 1134, 1136 (TTAB 2009) (deeming materials applicant improperly submitted under notice of reliance stipulated into the record because opposer treated the entire notice of reliance as of record); General Elec. Co. v. Graham Magnetics Inc., 197 USPQ 690 (TTAB 1977) (deeming parties to have stipulated to evidence improperly submitted under notice of reliance where both parties did it and neither objected). Some of the evidence Opposer filed under seal is not confidential. “We treat only testimony and evidence that is truly confidential or commercially sensitive as such.” Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n. 21 (TTAB 2016). Opposer’s Brief, 18 TTABVUE 26. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.”). 13 Applicant’s Declaration, 16 TTABVUE. 14 Applicant’s Notice of Reliance, 17 TTABVUE.


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• Registration certificates and applications for third-party POSH-formative

marks;15 and

• Screenshots from websites displaying third-party POSH-formative marks

and from Instagram displaying social media handles incorporating the term

POSH.

Opposer raises three objections to Applicant’s evidence related to third-party

marks. First, Opposer argues that this evidence should be excluded because

Applicant should have produced it in response to discovery requests. Applicant has

testified that she gathered the third-party-mark evidence during trial “[o]n or about

August 14, 2019.”16 Because it is clear that the documents were collected for trial and

were not in Applicant’s possession or control when she responded to Opposer’s

discovery requests, this objection is overruled. See Rocket Trademarks Pty. Ltd. v.

Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB 2011) (objected-to documents were

obtained or created by applicant in anticipation of trial and were not responsive

documents that were already in its possession or control when it responded to

document requests); see also Sheetz of Del., Inc. v. Doctor’s Assoc. Inc., 108 USPQ2d

1341, 1348 (TTAB 2013) (a party need not investigate third-party use to respond to

discovery requests); Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1788

(TTAB 2001) (no obligation to search for third-party uses to respond to discovery

requests). In addition, Opposer was not put at a disadvantage by Applicant’s third-

15 Many of the registration certificates are duplicates, which complicated our review of the record. 16 Opposer’s Notice of Reliance, 8 TTABVUE 34 and 79, ¶¶ 25 and 27.


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party use and registration evidence because it is common practice to introduce such

evidence to demonstrate the lack of conceptual or inherent strength of a plaintiff’s

mark, the third-party use and registration evidence was equally accessible to

Opposer, and Opposer had thirty days between the close of Applicant’s testimony

period and the opening of Opposer’s rebuttal testimony period to prepare and

introduce any rebuttal against the evidence of third-party use and registration. See

Sheetz of Del., 108 USPQ2d at 1348.

Second, Opposer objects that “Applicant has not provided the current status of the

cited registrations and applications via a TSDR report as required by TBMP Section

704.03(b)(1)(B).”17 The plain copies of the third-party registration certificates and

applications that Applicant submitted are sufficient to make these third-party

registrations and applications of record. See Weider Pubs., LLC v. D&D Beauty Care

Co., 109 USPQ2d 1347, 1350 (TTAB 2014) (plain copies of third-party applications

admissible as official records under Trademark Rule 2.122(e)); Rocket Trademarks

Pty. Ltd., 98 USPQ2d at 1070 n.11 (“A party that wishes to make such a third-party

registration of record in a Board inter partes proceeding may do so by filing, during

its testimony period, a plain copy of the registration, a printout or a copy of

information of the registration from the Office’s electronic database records ….”);

Merritt Foods Co. v. American Submarine, 209 USPQ 591, 593 n.16 (TTAB 1980)

(comparing the procedure for introducing third-party registrations with the

requirements for introducing one’s own registrations and explaining the reasons for

17 Opposer’s Brief, 18 TTABVUE 51.


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the different treatment). In any event, Applicant testified as to the current status of

the registrations and applications.18 Accordingly, this objection is overruled.

Third, Opposer objects to the relevance of some of Applicant’s third-party

evidence.19 This objection concerns the weight rather than the admissibility of the

evidence and, therefore, this objection is overruled. We have considered this evidence

for whatever probative value it may have.

In addition to the foregoing, Opposer objects to Applicant’s testimony to the extent

Applicant speculates as to the knowledge and intent of others. These objections are

sustained. We have not considered Applicant’s speculative testimony.

II. Standing

Opposer must prove its standing by showing a “real interest” in the outcome of the

proceeding and a “reasonable” basis for believing that it will suffer damage if

Applicant’s marks are registered. Trademark Act Section 13, 15 U.S.C. § 1063;

Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

1062 (Fed. Cir. 2014). A “real interest” is a “direct and personal stake” in the outcome

of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed.

Cir. 1999).

Opposer has properly introduced its pleaded registrations showing that the

registrations are subsisting and owned by Opposer.20 Coach Servs. v. Triumph

18 Applicant’s Declaration, 16 TTABVUE 79-96, ¶ 27. 19 Opposer’s Brief, 18 TTABVUE 51-52. 20 Opposer’s Notice of Reliance, 8 TTABVUE 11-18 and 23-30.


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Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

2000). Because these registrations form the basis of a plausible Section 2(d) claim,

Opposer has established its standing. See Lipton Indus. Inc. v. Ralston Purina Co.,

670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).

III. Section 2(d) Claim

A. Opposer’s Pleaded Common Law Marks

We address first whether Opposer has proven prior use of its pleaded unregistered

marks POSH GOTH and PERFECTLY POSH GOTH because these marks are closer

to Applicant’s marks than Opposer’s pleaded registered marks. Opposer must prove

by a preponderance of the evidence that it acquired common law rights before any

date on which Applicant may rely. Embarcadero Techs., Inc. v. RStudio, Inc., 105

USPQ2d 1825, 1834 (TTAB 2013); see also Hydro-Dynamics, Inc. v. George Putnam

& Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). In considering the

evidence of common law priority, “we look at the evidence as a whole, as if each piece

of evidence were part of a puzzle which when fitted together, establishes prior use.”

See West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663

(Fed. Cir. 1994).

For priority purposes, Applicant is entitled to rely on the filing dates of her

involved applications, i.e. September 15, 2017 and October 16, 2017, as her

constructive dates of first use. See Zirco Corp. v. Am. Tel. and Tel. Co., 21 USPQ2d

1542, 1544 (TTAB 1991) (“[T]here can be no doubt but that the right to rely upon the

https://www.bloomberglaw.com/product/ip/bc/W1siU2VhcmNoIFJlc3VsdHMiLCIvcHJvZHVjdC9pcC9zZWFyY2gvcmVzdWx0cy8wNmExZjUzNmU4MzAzNjk1ZTk3ZDQ2YTU5Y2Q4ZWI5NyJdLFsiRG9jdW1lbnQiLCIvcHJvZHVjdC9pcC9kb2N1bWVudC9YM0Q4QkRHRzAwME4_Z3VpZD1iNDgyMDE3Zi0yZDI5LTQwYmUtODA3MC02YjIyNzZhYjg3NTgiXV0--91f3d6636001df809df9daf6da59f35f1b410d2e/document/1?citation=105%20USPQ2d%201825&summary=yes#jcite


https://www.bloomberglaw.com/product/ip/bc/W1siU2VhcmNoIFJlc3VsdHMiLCIvcHJvZHVjdC9pcC9zZWFyY2gvcmVzdWx0cy8wNmExZjUzNmU4MzAzNjk1ZTk3ZDQ2YTU5Y2Q4ZWI5NyJdLFsiRG9jdW1lbnQiLCIvcHJvZHVjdC9pcC9kb2N1bWVudC9YM0Q4QkRHRzAwME4_Z3VpZD1iNDgyMDE3Zi0yZDI5LTQwYmUtODA3MC02YjIyNzZhYjg3NTgiXV0--91f3d6636001df809df9daf6da59f35f1b410d2e/document/1?citation=811%20F.2d%201470&summary=yes#jcite


https://www.bloomberglaw.com/product/ip/bc/W1siU2VhcmNoIFJlc3VsdHMiLCIvcHJvZHVjdC9pcC9zZWFyY2gvcmVzdWx0cy8wNmExZjUzNmU4MzAzNjk1ZTk3ZDQ2YTU5Y2Q4ZWI5NyJdLFsiRG9jdW1lbnQiLCIvcHJvZHVjdC9pcC9kb2N1bWVudC9YM0Q4QkRHRzAwME4_Z3VpZD1iNDgyMDE3Zi0yZDI5LTQwYmUtODA3MC02YjIyNzZhYjg3NTgiXV0--91f3d6636001df809df9daf6da59f35f1b410d2e/document/1?citation=31%20F.3d%201122&summary=yes#jcite



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constructive use date comes into existence with the filing of the intent-to-use

application and that an intent-to-use applicant can rely upon this date in an

opposition brought by a third party asserting common law rights.”). The record shows

that on May 30, 2018, Ms. Lipomi assigned to Opposer her common law rights in the

POSH GOTH and PERFECTLY POSH GOTH marks “used as a WebID (e.g., an

Internet domain name, URL, subdomain name, email address, or social media

handle, address, or name).”21 Accordingly, we must consider Ms. Lipomi’s use of

POSH GOTH and PERFECTLY POSH GOTH to determine whether Opposer has

priority in these marks. See Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1790

n.9 (TTAB 2006) (“[T]he law is well established that an assignee stands in the shoes

of its assignor.”).

Ms. Lipomi testified that she uses the “PERFECTLY POSH, PERFECTLY POSH

GOTH, and POSH GOTH Marks on several point-of-sale materials, including but not

limited to business cards and shipping labels,” but she has not testified about when

she started using the business cards and shipping labels and there is no other

evidence as to when she commenced such use.22 Accordingly, there is no basis for

finding that these uses predate Applicant’s constructive first use dates.

21 The assignment is under seal at 15 TTABVUE. It is unclear why the document is confidential. It does not contain any financial or other information that would appear to be commercially sensitive. The language we have quoted cannot reasonably be considered confidential because Opposer’s priority claim is based, in part, on allegations and public evidence that Ms. Lipomi used the alleged marks as part of a domain name, subdomain name, and social media handle. Trademark Rule 2.116(g). 22 Ms. Lipomi also testified that since September 2015 she has “used the poshgoth.po.sh website and the PERFECTLY POSH GOTH and POSH GOTH Marks continuously in association with my business as an Independent Consultant for Perfectly Posh.” Lipomi Declaration, 13 TTABVUE 2-3, ¶¶ 2 and 4; see also Kasteler Declaration, 12 TTABVUE 9,


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Ms. Lipomi also testified to spending “countless hours per year in promotional

efforts, including hosting private events, attending conferences, recruiting new

Independent Consultants, and promoting PERFECTLY POSH products on social

media under the PERFECTLY POSH GOTH and POSH GOTH Marks.”23

Promotional use (i.e. “non-technical” use) of a mark is sufficient to support priority

where “the use of the mark has created in the minds of the relevant public an

association between the goods or services and their source.” Central Garden & Pet

Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1142-43 (TTAB 2013). Importantly:

purchaser perception must involve more than an insubstantial number of potential customers. … In other words, advertising of sufficient clarity and repetition to create the required identification must have reached a substantial portion of the public that might be expected to purchase the [goods or] service[s]. Thus, the user must prove that the ‘necessary association’ was created among more than an insubstantial number of potential customers. Otherwise, he cannot show ‘significant impact on the purchasing public.’

T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882-83 (Fed. Cir.

1996) (“An unbroken line of precedents of both this court and the Board make clear

that activities claimed to constitute analogous use must have substantial impact on

the purchasing public.”); see also Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d

1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (for purposes of analogous use, the

activities claimed to create an association in the minds of the purchasing public

¶ 25. The record does not include screenshots of the poshgoth.po.sh website. The one use of poshgoth.po.sh on a website (at perfectlyposh.artisancraftfestival.com, as opposed to a social media account) is dated January 8, 2019, which is after Applicant’s constructive dates of first use. Opposer’s Notice of Reliance, 8 TTABVUE 204. 23 This information was improperly filed under seal. Promotional efforts by their nature are public. Trademark Rule 2.116(g).


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between the mark and goods “must reasonably be expected to have a substantial

impact on the purchasing public[.]”).

Opposer did not submit any testimony regarding the size of the market for

“naturally-based skincare, cosmetic and scented products,”24 and the only evidence of

consumer exposure to Ms. Lipomi’s promotions are the number of “views” and “likes”

on the social media screenshots. Absent evidence of market size, and given that

Opposer’s products are general consumer products, we cannot conclude that more

than a negligible portion of the general consuming public of naturally-based skincare,

cosmetic, and scented products were exposed to Ms. Lipomi’s promotions before

Applicant’s constructive dates of first use.25 T.A.B. Sys., 37 USPQ2d at 1883.

We are not persuaded by Opposer’s argument that Applicant has testified to Ms.

Lipomi’s prior trademark use and “cannot now argue that Opposer’s use of the POSH

GOTH Marks is non-trademark use after she complained of infringement by the very

same use in 2017 to Ms. Lipomi, YouTube, and Perfectly Posh.”26 Applicant has

acknowledged Ms. Lipomi’s promotional use, but not that a substantial segment of

the relative purchasing public was exposed to Ms. Lipomi’s use as necessary to give

rise to protectable rights based on analogous use.

24 Kasteler Declaration, 12 TTABVUE 2-3, ¶¶ 2-5; Lipomi Declaration, 13 TTABVUE 3, ¶¶ 2-4 (testifying to Opposer’s products as “naturally-based”). 25 Advertising expenditures can “support an inference of public identification” but Ms. Lipomi’s advertising expenditures (filed under seal) are de minimis and do not support such an inference. 26 Opposer’s Brief, 18 TTABVUE 27.


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In sum, Opposer has not demonstrated prior proprietary rights in the marks

POSH GOTH or PERFECTLY POSH GOTH. Accordingly, Opposer’s Section 2(d)

claim based on the POSH GOTH and PERFECTLY POSH GOTH marks must fail,

subject to Applicant establishing constructive use through registration of her marks.

15 U.S.C. § 1068; Trademark Rule 2.129(d), 37 C.F.R. § 2.129(d).

B. Opposer’s Pleaded Registered Marks

Opposer has made its pleaded registrations of record, which Applicant has not

counterclaimed to cancel, so priority is not an issue with respect to the marks

PERFECTLY POSH and for the goods and services identified in the

pleaded registrations. See Top Tobacco LP v. N. Atl. Op. Co., 101 USPQ2d 1163, 1169

(TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,

82 USPQ 108 (CCPA 1974)); see also Massey Junior Coll., Inc. v. Fashion Inst. of

Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior use need not be

shown by a plaintiff relying on a registered mark unless the defendant counterclaims

for cancellation.”); Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB 1988) (“because

of the existence of opposer’s valid and subsisting registration, it need not prove prior

use as to the services recited therein”).

Turning to likelihood of confusion, we focus our analysis on whether there is a

likelihood of confusion between Applicant’s marks and Opposer’s standard character

mark PERFECTLY POSH because if there is no likelihood of confusion between these


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marks then Applicant’s marks are not likely to be confused with Opposer’s design

mark, which includes additional points of difference. See Max Capital Grp. Ltd., 93

USPQ2d 1243, 1245 (TTAB 2010) (confining 2(d) analysis to one of two cited marks).

Our determination under Section 2(d) is based on an analysis of all of the

probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“Du Pont”); see

also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

2003). We consider each Du Pont factor for which there is evidence and argument.

See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.

2019); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944,

1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,

1242 (TTAB 2015) (“While we have considered each factor for which we have

evidence, we focus our analysis on those factors we find to be relevant.”).

In any likelihood of confusion analysis, two key considerations are the similarities

between the marks and the similarities between the goods. See In re Chatam Int’l

Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.

v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The

fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences

in the essential characteristics of the goods and differences in the marks.”). We

discuss these factors, and the other relevant Du Pont factors below.


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1. Similarity or Dissimilarity of the Goods

We must base our comparison of the goods on the identifications in Applicant’s

applications and Opposer’s registration. See Stone Lion Capital Partners, LP v. Lion

Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys.,

Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

1990). It is sufficient for a finding of likelihood of confusion if relatedness is

established for any item encompassed in the identification of goods or services in a

particular class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209

USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d

377409, *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB

2015).

Both Applicant’s applications and Opposer’s registration cover “perfumes.” The

term “cosmetics” in Applicant’s applications also is broad enough to encompass “lip

tint,” “nutritional oils for cosmetic purposes,” “mineral powders for use as cosmetic

makeup,” and “mineral makeup” in Opposer’s registrations. See In re Hughes

Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly

worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly

identified ‘residential and commercial furniture.’”). Accordingly, the goods are in part

legally identical, which weighs heavily in support of a likelihood of confusion.

2. Similarity or Dissimilarity of the Trade Channels and Classes of Consumers

Because the goods are in part legally identical and there are no restrictions or

limitations in the applications or registrations, we must presume that the channels

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of trade and classes of purchasers for the parties’ goods are the same. See Cai v.

Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re

Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical

goods are presumed to travel in same channels of trade to same class of purchasers);

In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where

there are legally identical goods, the channels of trade and classes of purchasers are

considered to be the same). These factors also weigh heavily in favor of likelihood of

confusion.

3. Sophistication of the Purchasers

Opposer argues that the parties’ goods “are relatively low-priced and thus subject

to impulse purchasing” increasing the risk of confusion.27 There are no price

restrictions in the parties’ identifications of goods and the evidence shows that both

parties market their cosmetic and personal care products at price points under $25.

Because the goods are relatively inexpensive and frequently replaceable, they may be

subject to impulse purchase. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441 (TTAB

2012); Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ

541, 542 (Fed. Cir. 1985) (purchasers of “relatively inexpensive and frequently

replaceable … products have long been held to a lesser standard of purchasing care”).

Accordingly, this factor too supports a finding of likely confusion.

27 Opposer’s Brief, 18 TTABVUE 39.


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4. Strength of Opposer’s Registered Mark

The strength of Opposer’s mark affects the scope of protection to which it is

entitled. Accordingly, before comparing the marks, we assess the strength of

Opposer’s mark considering both its conceptual strength based on the nature of the

mark itself and its commercial strength based on consumer recognition of the mark.

In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)

(“A mark’s strength is measured both by its conceptual strength (distinctiveness) and

its marketplace strength (secondary meaning).”).

With respect to conceptual strength, “third-party registrations can be used in the

manner of a dictionary definition to illustrate how a term is perceived in the trade,

industry, or ordinary parlance.” RxD Media, LLC v. Application Dev. LLC, 125

USPQ2d 1801, 1812 (TTAB 2018) (citing Juice Generation, Inc. v. GS Enters. LLC,

794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)). The following use-based

registrations issued to different third-parties for the same or highly related goods and

services:28

28 Applicant’s Notice of Reliance, 17 TTABVUE 78-83, 85, 90-91, 97-98, 101, 114-115, 118-119, 134-135, 141-142, 158-159, 162-163, 180-183, 188-189, 220-221, 287-288, 307-308, 315-316, 340-341, 372-373, 389-390, 406-407, 444-445, 535-536, 586-587, 692-693, 786-787, and 798-799.


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Reg. No. Mark Pertinent Goods/Services 5299065

POSH COLLECTION (COLLECTION disclaimed)

Cosmetics; cosmetics and make-up; private label cosmetics

5480074

POSH PLUSH COSMETICS (COSMETICS disclaimed)

Lipstick; makeup

5402394

PURE, POSH & PLAYFUL Cosmetics, cosmetic preparations; toiletry bags sold filled with cosmetics; online retail store services featuring cosmetics and beauty products

5681221 5681213 5718112 5397814

POSH & POP (POSH disclaimed in first 3 registrations)

Applicator sticks for applying make-up; cosmetic brushes; foam toe separators for use in pedicures; sponges for applying makeup; Online retail store services featuring manicure and pedicure sets and accessories, namely, emery boards, pumice stones, nail files, and nail clippers and toe separators; Cosmetic bags; cosmetic bags sold empty; Sleep masks

3565899

POSH Manicure and pedicure implements, namely, nail clippers, nail files, nail cleaners and nail buffers.

4904290

POSH Clear acrylic drawer organizer for cosmetics, hair styling tools, and beauty care products

5064588 POSH PETS (PETS disclaimed) Shampoo-conditioners; shampoos

5715365 POSH HAIR DISTRICT Hair conditioner; hair products, namely, thickening control creams; shampoos


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5480074


Lipstick; makeup

5402394


4768619 POSH BOUTIQUE (Stylized) (BOUTIQUE disclaimed)

Retail store services featuring fragrances, lip gloss

5029491

PISH POSH PATCHOULI’S (Section 2(f) as to PATCHOULI’S)

Retail store services and online retail store services featuring bath and body care products, cosmetics, home scent products, fragrances; custom blending of scents for bath and body care products

4312778

THE POSH KITTEN On-line retail store services and retail store services featuring fashion and beauty products, namely, soaps, scent sprays, bath salts, lotions, lip balm, lip moisturizers, lip scrubs, makeup cases and bags

4874604

YOUNG N POSH & Design (YOUNG Disclaimed)

Retail store and on-line retail store services featuring merchandise geared towards girls and boys, namely, perfume and lotions

4532565 POSH & Design Medical spa services, namely, minimally invasive cosmetic and body fitness therapies

4406823 POSH & CLEVER CONCEPT BOUTIQUE

Cosmetology services


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5480074


Lipstick; makeup

5402394


5345191 POSH YOURSELF Beauty consultation services in the selection and use of cosmetics, fragrances, beauty aids, personal care products, and bath, body and beauty products

4880387

POSH BLOWDRY BAR (BLOWDRY BAR disclaimed)

Beauty salon services; beauty salons

5030601 POSH AND SPARKLE (SPARKLE disclaimed)

Blow-outs

5610936

POSHMANIPEDI Eyelash extension services; manicure services; nail care salons and services

4318590

SIMPLY POSH AESTHETIC (ASTHETIC disclaimed)

Health spa services, namely body wraps, mud treatments, seaweed treatments, hydrotherapy baths, and body scrubs; health spa services, namely, laser treatments for facials; medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies

4957096

POSH STILETTO On-line journals, namely blogs featuring beauty, fashion and lifestyle

4217801 POSH NAILS (Stylized) (NAILS disclaimed)

Nail care salons


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5480074


Lipstick; makeup

5402394


4091541

POSH BEAUTY & Design (BEAUTY disclaimed)

Computer services, namely, creating an on-line community for registered users to participate in discussions, getting feedback from their peers, form virtual communities, and engage in social networking featuring beauty services.

The ubiquity of registrations for marks incorporating the term “POSH” for goods

and services identical and closely related to those covered by Opposer’s registration

is “powerful” evidence that the “POSH” portion of Opposer’s mark has a well-

recognized descriptive or highly suggestive meaning in the personal care, cosmetic,

and beauty field. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co KGAA v. New

Millennium Sports, 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015) (“[E]xtensive

evidence of third-party use and registrations is ‘powerful on its face,’ even where the

specific extent and impact of the usage has not been established.”) quoting Juice

Generation, 115 USPQ2d at 1674. Accordingly, the “POSH” segment of Opposer’s

mark is extremely weak.


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We next turn to Applicant’s evidence of third-party use. Proof of third-party use

of similar marks for similar goods bears on the commercial strength of a mark. See

Juice Generation, 115 USPQ2d at 1674. Applicant testified that “[o]n or around

August 14, 2019” she “completed a Google search of the term “POSH” and located

approximately 25 different users of the term in connection with cosmetics and

perfume products, none of which appear to be belong to the Opposer.”29 Applicant

included in her declaration and submitted with her notice of reliance screenshots

from her search results.30 Many of the screenshots consist solely of product images

like the examples here:

29 Applicant’s Declaration, 16 TTABVUE 45, ¶ 26. 30 Id. at 45-78; Applicant’s Notice of Reliance, 17 TTABVUE 883-914.


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Others screenshots are of websites or products with pricing information as shown

below:


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Applicant further testified that “[o]n or about August 14, 2019” she “completed a

search of the Instagram website and located approximately 76 different uses of the

term “POSH” used in connection with, or related to cosmetics.”31 Included in her

declaration are screenshots of her Instagram search results showing a number of

third-party Instagram handles incorporating the word “posh” combined with the word

“cosmetic(s),” or “beauty,” or other generic personal-care-related terms.32 One of the

screenshots is reproduced here:

31 Applicant’s Declaration, 16 TTABVUE 34, ¶ 25. 32 Id. at 35-44.


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The screenshots of third-party cosmetic websites and products for sale are the

strongest evidence of record that consumers have been exposed to POSH-formative

marks in the marketplace. We give less weight to the screenshots showing only

product images because there is no evidence that these products are or have been

offered for sale. Similarly, Applicant’s Instagram screenshots are limited in probative

value because they do not show the content of the social media accounts associated

with the handles.33 Cf. In re Int’l Bus. Machines Corp., 81 USPQ2d 1677, 1679 n.3

(TTAB 2006) (listings of search results from Google database of limited probative

value because the excerpts are extremely truncated). Still, this evidence on its face

shows that consumers may have been exposed to these product images and social

media handles. Cf. Rocket Trademarks Pty Ltd., 98 USPQ2d at 1072 (internet

printouts “on their face, show that the public may have been exposed to those internet

websites and therefore may be aware of the advertisements contained therein”).

Even though some of the third-party evidence has limitations, and the record does

not show the extent and impact of the third-party uses, we find that the evidence,

taken as a whole, is “powerful on its face,” Jack Wolfskin, 116 USPQ2d at 1136; Juice

Generation, 115 USPQ2d at 1674, and supports that consumers in the marketplace

have become conditioned to encountering and distinguishing between POSH-

formative marks in the cosmetic, personal care, and beauty field based on minute

differences between the marks. See also Anthony’s Pizza & Pasta Int’l Inc. v.

33 In addition, at least a few of the handles appear to be for accounts directed to consumers outside the United States.


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Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed.

Appx. 222 (Fed. Cir. 2010)

Opposer urges us to find that its mark is commercially strong based on its volume

of sales and advertising expenditures, both of which are significant,34 the popularity

of its social media accounts, and its charitable activities.35 This evidence suggests

that Opposer has developed some level of brand recognition. See Bose Corp. v. QSC

Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (recognizing

that strength of a mark may be measured by sales and advertising figures); Weider

Publ’ns, LLC, 109 USPQ2d at 1354 (same). Nevertheless, any recognition does not

overcome either Opposer’s place as just “one of many” sellers of POSH cosmetics, or

the conceptual or inherent weakness of “Posh” when used in connection with

cosmetics as shown by the evidence of third-party use and registration.

Opposer also argues that it “maintains a policing and enforcement program to

protect its rights”36 pointing to its successful opposition against an application for the

mark ELEGANTLY POSH, a cancellation action currently pending against a

registration for POSH COLLECTION, and a request for extension of time to oppose

that it has obtained with respect to an application for the mark LELE POSH

34 Filed under seal at 15 TTABVUE. 35 Opposer’s Brief, 18 TTABVUE 19. Ms. Kasteler has testified that Opposer has nearly 180,000 Facebook followers, approximately 77,500 Instagram followers, 12,600 Twitter followers, and more than 7500 YouTube subscribers. Kasteler Declaration, 12 TTABVUE 4-5 ¶ 11. 36 Opposer’s Brief, 18 TTABVUE 18.


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COSMETICS.37 Enforcement efforts are pertinent to the strength of a mark. Burns

Philp Food Inc. v. Modern Prods. Inc., 24 USPQ2d 1157, 1158 n.2 (TTAB 1992)

(policing efforts go to the strength of the mark); Po Folks, Inc. v. Kourtney Folks Rest.,

Inc., 231 USPQ 313, 315 (TTAB 1986) (same); 2 J. Thomas McCarthy, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION §11.91 (5th ed. 2020) (an “active program of

prosecution of infringers ... enhances the distinctiveness and strength of a mark”).

But Opposer’s activities fall far short of a rigorous enforcement program that would

give rise to strong rights.38 Indeed, despite Opposer’s enforcement activities, a

number of third-party POSH-formative marks are in use and have been registered

for relevant goods and services.

Despite the brand recognition strength developed by Opposer for its PERFECTLY

POSH mark, we find that the “POSH” portion of Opposer’s mark is so conceptually or

inherently weak and diluted by third party use that it will not act as a bar to the

registration of every mark that includes the word “Posh.” “[I]t will only bar the

registration of marks ‘as to which the resemblance to [PERFECTLY POSH] is

striking enough to cause one seeing it to assume that there is some connection,

association or sponsorship between the two.’” Anthony’s Pizza, 95 USPQ2d at 1278

(quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).

37 Id. at 18 and 30. Opposer improperly filed this information under seal; it is publicly available through TTABVUE. 38 Opposer argues that it “is not required to police and enforce against uses of its PERFECTLY POSH Marks that are relatively insignificant or present a low risk of weakening its trademark rights.” Id. at 31-32. That is true, but the number of third-party uses and registrations of record significantly affects the strength of Opposer’s PERFECTLY POSH marks.


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5. Similarity or Dissimilarity Between the Marks

We next consider the similarity or dissimilarity of the marks in their entireties as

to appearance, sound, connotation and commercial impression. Stone Lion, 110

USPQ2d at 1160 (Fed. Cir. 2014); DuPont, 177 USPQ at 567. The issue is not whether

the marks can be distinguished when subjected to a side-by-side comparison, but

rather whether the marks are sufficiently similar in terms of their overall commercial

impression that confusion as to the source of the goods offered under the respective

marks is likely to result. Coach Servs. Inc., 101 USPQ2d at 1721. The focus is on the

recollection of the average purchaser, who normally retains a general rather than

specific impression of trademarks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438

F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d at

1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because

the goods at issue are cosmetics that may be purchased on impulse, the average

purchaser is an ordinary consumer.

We do not predicate our analysis on a dissection of the involved marks; we consider

the marks in their entireties. Stone Lion, 110 USPQ2d at 1160; Franklin Mint Corp.

v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic

that a mark should not be dissected and considered piecemeal; rather, it must be

considered as a whole in determining likelihood of confusion.”). It is not improper,

however, to give more weight to a dominant feature of a mark, provided the ultimate

conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110


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USPQ2d at 1161 (citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751

(Fed. Cir. 1985)); In re Chatam Int’l, Inc., 71 USPQ2d at 1946.

Both Applicant’s marks and Opposer’s mark share the term “posh” but, as we have

discussed, “posh” is a weak term for Applicant’s and Opposer’s goods that carries little

trademark significance. Accordingly, even relatively minor differences between the

marks may be sufficient to avoid finding that the marks are similar. See Am. Lebanese

Syrian Associated Charites, Inc. v. Child Health Research Inst., 101 USPQ2d 1022,

1031 (TTAB 2011) (where the common element in the marks is highly suggestive, the

additional matter in the marks may serve to distinguish the marks). The inclusion of

the word “perfectly” as the first word in Opposer’s mark creates a four-syllable mark

with an alliteration. In contrast, Applicant’s marks are comprised of two, four letter

one-syllable words, POSH GOTH, that are somewhat visually similar sharing a

middle letter “o” and ending with an “h.” As a result, there are significant visual and

aural differences between the parties’ marks. The design element in Applicant’s

design mark creates an additional point of distinction in appearance.

The meaning and commercial impression of the marks also is different. The term

“perfectly” in Opposer’s mark modifies the word “posh” conveying the aspirational

message that using Opposer’s goods will make the consumer flawlessly elegant and

fashionable. Applicant’s mark is a paradox with a completely different meaning and

commercial impression. The term “posh,” conveying elegance, contrasts with the

meanings of the word “goth”: “rock music marked by dark and morbid lyrics” and “a

person who wears mostly black clothing, uses dark dramatic makeup, and often has


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dyed black hair.”39 The macabre design element in Applicant’s design mark reinforces

the importance of the term “goth” in Applicant’s marks.

The differences between the marks weigh heavily against a finding that the marks

are likely to be confused.

6. Absence of Actual Confusion

There is no evidence regarding the extent of Applicant’s use of the POSH GOTH

mark so we cannot assess whether there has been a meaningful opportunity for actual

confusion to have occurred in the marketplace. See Double Coin Holdings Ltd. v, 2019

USPQ2d 377409 at *9 (citing Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d

1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual

confusion is of very little, if any, probative value” where evidence of as to the use of

Applicant's merchandise during the time in question was not presented)); Barbara’s

Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value

of the absence of actual confusion depends on there being a significant opportunity

for actual confusion to have occurred). This factor is neutral.

39 Merriam-Webster online dictionary, last visited June 4, 2020 (https://www.merriam-webster.com/dictionary/Goth). The Board may take judicial notice of definitions from dictionaries, including online dictionaries that exist in printed format. See e.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).


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7. Any Other Established Fact Probative of the Effect of Use

Opposer argues that Applicant filed the involved applications in bad faith because

“Applicant had direct knowledge of Opposer and Opposer’s Marks, and their priority

and believed that they conflicted with her own mark, at the time she submitted her

Applications for POSH GOTH to the USPTO.”40 Bad faith adoption of a mark is

strong evidence that confusion is likely. L.C. Licensing Inc. v. Berman, 86 USPQ2d

1883, 1891 (TTAB 2008). Applicant first used the POSH GOTH mark in connection

with the retail sale of clothing in January 2015. In May 2015, she started promoting

perfume on Facebook under the POSH GOTH user name.41 There is no evidence that

Applicant was even aware of Opposer’s PERFECTLY POSH marks in 2015.

Moreover, Applicant filed the applications days after she learned about and objected

to Ms. Lipomi’s social media use of the #poshgoth hashtag, the poshgoth.po.sh domain

name and the PERFECTLY POSH GOTH YouTube Channel.42 Accordingly, it is

reasonable to infer that Applicant filed the applications to protect her rights in the

POSH GOTH marks, not to ride on the coattails of Opposer’s PERFECTLY POSH

marks. There simply is no basis for finding that Applicant acted in bad faith.

8. Conclusion

The parties’ goods are in part identical, but Opposer’s mark is both conceptually

and commercially very weak and there are significant differences between the marks

40 Opposer’s Brief, 18 TTABVUE 39. 41 Applicant’s Declaration, 16 TTABVUE 4, ¶¶ 4-6. 42 Id. at 14 and 16-24, ¶¶ 8 and 10-16.


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in overall appearance, sound, connotation and commercial impression. Accordingly,

we find that Applicant’s marks are not likely to cause confusion with Opposer’s

pleaded PERFECTLY POSH marks.

IV. Lack of Bona Fide Intent to Use

The basis for Opposer’s lack of bona fide intent to use claim is that Applicant did

not have the right to file her applications because Opposer owned superior rights in

the marks POSH GOTH, PERFECTLY POSH GOTH, and PERFECTLY POSH.43

Such a claim typically arises where parties claim rights in a mark “based on shared

circumstances” such as a former business relationship. Hole in 1 Drinks, Inc., 2020

USPQ2d 10020 *6 (“[T]he Board has previously held that the same operative facts

regarding parties claiming superior rights based on shared circumstances may

support different claims depending on whether they arise in a use-based application,

in which case the appropriate claim is lack of ownership, or in an intent-to-use

application, in which case the appropriate claim is lack of bona fide intent to use.”).

Here, the parties had no prior relationship that would give rise to such a claim and

Opposer did not introduce any other evidence to show that Applicant lacked a bona

fide intent to use her marks when she filed the applications.

V. Fraud

Opposer argues that Applicant committed fraud because, when Applicant filed her

applications, she knew that Opposer had superior rights in the marks POSH GOTH,

PERFECTLY POSH GOTH and PERFECTLY POSH and believed that a likelihood

43 Consolidated Notice of Opposition, 1 TTABVUE 9-10, ¶¶ 21-22.


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of confusion would result from her use of the applied-for marks.44 As we have

discussed, Opposer has not proven rights in POSH GOTH or PERFECTLY POSH

GOTH before Applicant’s constructive first use dates. Nor has Opposer established

that Applicant’s marks are likely to cause confusion with the PERFECTLY POSH

marks. Moreover, there is no evidence that Applicant had a subjective intent to

deceive the Office when she filed her applications as necessary to establish fraud. In

re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009) (“Subjective

intent to deceive, however difficult it may be to prove, is an indispensable element in

the analysis.”). For these reasons, Opposer has not proven fraud.

VI. Decision

Opposer’s priority and likelihood of confusion claims based on common law rights

in the marks POSH GOTH and PERFECTLY POSH GOTH are dismissed with

prejudice, subject to Applicant’s establishment of constructive use. See 15 U.S.C.

§ 1068; Trademark Rule 2.129(d), 37 C.F.R. § 2.129(d). The remaining claims in the

consolidated opposition are dismissed with prejudice.45

44 Opposer’s Brief, 18 TTABVUE 39 and 41-46. 45 Applicant’s affirmative defenses of estoppel, unclean hands and fraud are moot and need not be considered.

perfectly posh, llc jacqueline abner-pongratz

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