In a nonprecedential ruling, the CAFC has affirmed the Board’s decision [TTABlogged here] finding Louis Vuitton Malletier’s mark APOGÉE for perfume confusable with the registered mark APHOGEEfor hair care preparations. During prosecution of its application, Louis Vuitton attempted to sidestep the refusal by narrowing its identified channels of trade to “perfumery products for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network.” The CAFC concluded that substantial evidence supported the Board’s finding that the channels of trade overlap. In re Louis Vuitton Malletier, Appeal No. 2018-1651 (Fed. Cir. July 5, 2019) [nonprecedential].

Only the first four du Pont factors were at issue. As to the first factor, the similarity of dissimilarity of the marks, the court found that substantial evidence supported the Board’s findings that the two marks are similar in appearance, sound, and commercial impression. Louis Vuitton argued that consumers will translate the French word APOGÉE into “height,” but the court observed that “nothing suggest that a consumer would not similarly translate APHOGEE into ‘height’ as a variant of APOGÉE.”

As to the second factor, the relatedness of the goods, again substantial evidence supported the Board’s finding that the goods are related. The evidence showed that perfume and hair products are complementary goods that may emanate from the same source. [E.g., Calvin Klein sells “Aqua Essenziale” in perfume and shampoo form.]

Turning to the third factor, the channels of trade, substantial evidence supported the Board’s finding that the channels of trade are related. The APHOGEE registration includes no restrictions on trade channels, and thus it is presumed that its goods travel in all normal channels of trade, including traditional brick-and-mortar stores, online department stores, and high-end retail stores. Although Louis Vuitton’s application is restricted as to trade channels, it does include sales in high-end stores. Moreover, extensive evidence showed that high-end stores sell a mix of perfumery and hair care products like those at issue here.

Louis Vuitton argued that its goods would not “generally” be sold within a high-end store, and its application provides for sales only through store-within-store partnerships with high-end stores. The court observed, however, that the term “store-within-store partnership” is not defined, and Louis Vuitton conceded at oral argument that “the only record evidence describing such partnerships is a picture of a display wall and an article on a pop-up store in the common space of a mall in California.” Moreover, Louis Vuitton admitted at oral argument that it has a partnership with Henri Bendel in New York that “precludes interpreting a store-within-store partnership as an independent pop-up store within the general space of a mall.”

Without any evidence suggesting that a “store-within-store partnership[] with high-end retail stores” differs in any significant respect from a high-end retail store, we reject the contention that a “high-end retail store” is not a channel of trade appropriate for goods covered by the applied-for mark as well as the registered mark.

As to the fourth du Pont factor, the conditions of sale, substantial evidence supported the Board’s finding that this factor was neutral. The court noted that Luis Vuitton’s perfume sells for $350 per 200ml bottle, while the registrants hair products retail for about $11 per 16 ounce bottle. However, neither the application at issue nor the cited registration restrict purchasers or pricing, and “nothing prevents Louis Vuitton from developing a low-cost version of its product, or registrant from developing a high-end version of its products.”

Because substantial evidence supported the Board’s findings for each factor, the court affirmed the Board’s conclusion that confusion is likely.

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TTABlog comment: The court’s discussion of channels of trade is not the clearest.

Text Copyright John L. Welch 2019.