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Lovely Skin, Inc. v Ishtar Skin Care Products, LLC

Case No. 12-3631 (C.A. 8, Mar. 13, 2014)

Lovely Skin, Inc. (“Lovely Skin”) brought a four-count complaint against Ishtar Skin Care Products, LLC (“Ishtar”), alleging trademark infringement and false designation of origin under the Lanham Act, and common law unfair competition and injury to business reputation in violation of Nebraska law. Ishtar counterclaimed, seeking cancellation of the registrations of Lovely Skin’s two trademarks. After a bench trial, the district court canceled the registrations and entered judgment for Ishtar on all four counts of Lovely Skin’s complaint. Lovely Skin appeals. For the reasons discussed below, we reverse the district court’s judgment canceling Lovely Skin’s trademark registrations and otherwise affirm its judgment in favor of Ishtar.

I.



Lovely Skin was incorporated in Nebraska in 2003 and is owned by Dr. Joel Schlessinger, a dermatologist, and his wife Nancy Schlessinger. Lovely Skin retails cosmeceutical skin care products, which are cosmetics with pharmaceutical benefits. Lovely Skin carries both dermatologist-recommended, third-party skin care products and its own products under the brand name “Lovely Skin.” These products range in price from approximately $3 to $400. Lovely Skin primarily sells the products through its website www.LovelySkin.com.

Starting in 2003, Lovely Skin began purchasing keywords from internet search engine companies to drive customers to its website. By purchasing keywords, Lovely Skin’s website appeared toward the top of the search results web page when an internet user searched for any of the purchased keywords. Lovely Skin paid each search engine provider based on the number of users who, after searching for a keyword, then accessed its website. Currently, Lovely Skin purchases approximately 10,000 different keywords, including the names of its most well-known products. From 2003 to 2005, Lovely Skin spent more than $489,000 on keyword advertising, and from 2006 to 2007, Lovely Skin spent more than $577,000. Lovely Skin also advertised by distributing a catalog through the mail, purchasing print advertisements, and sending an electronic newsletter. In 2010, Lovely Skin retained Megan Driscoll, a public relations consultant, to garner national media coverage for its brand. As a result of this advertising and media coverage, Lovely Skin’s revenue grew steadily: from approximately $300,000 in 2002, to $700,000 in 2003, to $5.1 million in 2005, and to $13 million in 2011.
 

 

Judge(s): Raymond Gruender
Jurisdiction: U.S. Court of Appeals, Eighth Circuit
Related Categories: Civil Remedies , Trademark
 
Circuit Court Judge(s)
Steven Colloton
Raymond Gruender
Roger Wollman

 

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“become distinctive of the goods/services through the applicant’s substantially -15- cancel the registration.” cold war museum, inc. v. cold war air museum, inc., 586 of likelihood of confusion. however, the district court did not adopt such a whether a mark is federally registered does not bear on a mark’s strength or its brand awareness was high. driscoll also explained that the products that lovely not merely a possibility. see jeld-wen, inc. v. dalco indus., inc., 198 f.3d 250, at *4 registrations and the ultimate burden of persuasion to prove that lovely skin’s trademarks pursuant to 15 u.s.c. §§ 1064 and 1119. the case proceeded to a bench trademarks cannot overcome the strong presumption of validity and establish a prima overcome the substantial burden of showing that lovely skin’s trademarks had not the district court’s likelihood of confusion analysis. for the aforementioned reasons, we reverse the district court’s judgment from 2003 to 2005, lovely skin spent more than $489,000 on keyword advertising, 1976). if these other marks were not used in a meaningful way, they do not their registrations was exclusive. to be sure, this evidence would not provide any appeal. first, lovely skin argues that the district court erred in canceling the applied to register lovelyskin.com, and in january 2007, an amendment was producing additional evidence or argument in defense of registration . . . shifts to the keyword, then accessed its website. currently, lovely skin purchases approximately skin’s trademarks had acquired distinctiveness as of the date of their registrations erroneous and that if it did not, the record permits only one permissible resolution of register because it determined that both marks were “merely descriptive.” the marks vardeh claims, however, that she has never observed any instances of consumer acquired distinctiveness where “[d]efendant introduced no evidence that these when it found that ishtar satisfied its burden to rebut the presumption that lovely ______________________________ and placed it on the principal register on september 20, 2005. in 2006, lovely skin supplemental register.” id. (internal citation omitted) (quoting 15 u.s.c. § 1052(e)). and sending an electronic newsletter. in 2010, lovely skin retained megan driscoll, in its 2004 application for lovelyskin, lovely skin declared that the mark had unaware of lovely skin or its website. ishtar is a much smaller retailer than lovely asserted if such mark had not been registered.” 15 u.s.c. § 1115(a). second, the lovely skin’s trademarks lovelyskin and lovelyskin.com were ___________________________ degree of care that consumers will exercise in making their purchases reduces the and from 2006 to 2007, lovely skin spent more than $577,000. lovely skin also exists.” squirtco, 628 f.2d at 1091. the district court found that the niche starting in 2003, lovely skin began purchasing keywords from internet search v. seven-up company, 628 f.2d 1086, 1091 (8th cir. 1980): “(1) the strength of the schlessinger presently has no evidence that lovely skin’s use of its marks prior to are insufficient to support a finding of likelihood of confusion). and resulting sales growth demonstrate substantial commercial strength. the district exclusive and continuous use in commerce for at least the five years immediate before i. iii. the date of this statement.” in its lovelyskin.com application, lovely skin error by finding that there was minimal evidence of actual confusion. see duluth be placed on any one factor to the exclusion of others.”). -8- 1999) (holding that “any” use by third parties does not preclude an applicant’s use a. to an email she received from lovely skin when she attempted to send a copy of the f.2d 483, 486 (8th cir. 1991). thus, in order to demonstrate that its marks are strong, was insufficient evidence of actual confusion. the only evidence admitted at trial of discussed below, we reverse the district court’s judgment canceling lovely skin’s sufficient to demonstrate a prima facie showing of no acquired distinctiveness; this purchases in this market, thereby reducing the likelihood of confusion, was a lovely skin’s own expert testified that the products offered by lovely skin were trademarks were invalid by a preponderance of the evidence. see cold war museum, instead, it demonstrates only that, six and eight years after the applications, lovely evidence was of no real substance to the ultimate question. therefore, it cannot the evidence that lovely skin’s trademarks are invalid. as discussed above, this register is presumed to be valid, 15 u.s.c. § 1057(b), and “the presumption of designation of origin under the lanham act, and common law unfair competition and unclaimed, demanding that ishtar discontinue the use of its website. lovely skin then as a service mark, the parties have consistently referred to both as “trademarks,” as we combination thereof—used by a person . . . to identify and distinguish the services of the purchaser can eliminate the likelihood of confusion which would otherwise and counterclaimed seeking cancellation of the registrations of lovely skin’s conceptually is the “weakest protectable mark,” cellular sales, inc. v. mackay, 942 likelihood of confusion is clearly erroneous, specifically challenging the district relied on its lovelyskin registration to demonstrate acquired distinctiveness of its such as consumer surveys or consumer testimony, to demonstrate that its marks enjoy “a mark that does not meet all the requirements for registration on the it found that customers would exercise a high degree of care in making purchases and its own products under the brand name “lovely skin.” these products range in “indisputable” similarities in its analysis, but it nevertheless found no likelihood of trademarks had not acquired distinctiveness at the time of their registrations. will throughout our opinion. affect the likelihood of confusion analysis. m2 software inc. v. m2 commc’ns, acquired distinctiveness when they were registered. to do so, ishtar presented time of their registrations. isthar’s testimonial evidence does not prove that lovely registration. this evidence is insufficient to overcome the strong presumption of -9- schaub v. vonwald, 638 f.3d 905, 915 (8th cir. 2011). a unique product, from those manufactured or sold by others and to indicate the source made to that application to add a claim that lovelyskin.com had acquired -16- 15 u.s.c. § 1127. the lanham act initial burden, this evidence did not satisfy ishtar’s ultimate burden of persuasion. in -6- lovely skin next argues that the district court clearly erred by requiring that its ____________ from being substantially exclusive); scarves by vera, inc, 544 f.2d at 1173 (finding cancellation. neapco, inc. v. dana corp., 12 u.s.p.q.2d 1746, 1989 wl 274388, at lovelyskin. the pto also registered lovelyskin.com and placed it on the competition, and deceptive trade practices. in order to succeed on each of these four underscores that lovely skin’s weak marks would be afforded more protection if they green did not perform an investigation into whether lovely skin’s use of the mark acquired distinctiveness at the time of their registrations by a preponderance of the skin’s marks lacked commercial strength. two relevant measurements of a mark’s trademarks registrations insufficient to support a finding of invalidity where the appeal from united states district court ___________________________ to demonstrate public recognition prominently display and feature third-party search engine provider based on the number of users who, after searching for a lacked acquired distinctiveness at the time they were registered. as a preliminary confusion existed between the marks after considering all of thesquirtco factors. the (1994). on the other hand, ishtar did not present any additional evidence, other than nor can this evidence in combination with the third-party registrations be registrations of lovelyskin and lovelyskin.com. see 15 u.s.c. §§ 1114(1)(a) and 1125(a); sensient technologies corp. v. lovely skin’s trademarks had not acquired distinctiveness at the time of their result of this advertising and media coverage, lovely skin’s revenue grew steadily: 946 (fed. cir. 2000); see also 15 u.s.c. § 1064. when a mark is registered under registered pursuant to § 2(f), and therefore, in their applications, lovely skin had to 10,000 different keywords, including the names of its most well-known products. application, lovely skin declared that its mark had “become distinctive of the in determining that ishtar had satisfied its initial burden, the district court also filed applications with the united states patent and trademark office (“pto”) in support for lovely skin’s claim of substantially exclusive use. however, because the (“[n]o particular factors are determinative, [and]neither should excessive importance testified as an expert witness that lovely skin’s trademarks were well known and that pto registered lovely skin’s trademarks, the relevant inquiry is not whether lovely 2009, lovely skin was “seeing quite a bit of instances both orally and a couple -18- eye creams for $185, and its most expensive products sell for nearly $400. moreover, the public recognized these third party marks. therefore, evidence of three third finally, lovely skin challenges the district court’s determination that the weight of the factors depends on the facts of the individual case.” first nat. bank in goods/services through the applicant’s substantially exclusive and continuous use in skin and has earned approximately $2 million in total revenue between 2005 and of actual confusion; and (6) the type of product, its costs and conditions of purchase.” betweenlovelyskin’sandishtar’swebsitesinmarch2008,whenacustomeremailed three individuals regarding their involvement in and recollection of the application bench trial, the district court canceled the registrations and entered judgment for ishtar that lovely skin’s trademarks had not acquired distinctiveness at the time of their source of the services, even if that source is unknown.” 15 u.s.c. § 1127. while the terms “lovely” or “love” in combination with “skin” as well as testimony from however, “[t]he significance of third-party trademarks depends wholly upon their marks to be registered if they have acquired distinctiveness. see 15 u.s.c. § 1052(f). 302(a). the district court concluded, however, that no likelihood of confusion existed considered this factor in combination with the remaining squirtco factors. see calvin the burden of persuasion in a cancellation proceeding rests on the party seeking to skin’s trademark registrations because it found that ishtar had demonstrated that they lovelyskin is registered as a trademark and lovelyskin.com is registered evidence such as consumer testimony or surveys are most probative of secondary of its trademark on the principal register. 15 u.s.c. § 1051. the lanham act in 2004, lovely skin hired green zobmondo entm’t, llc, 602 f.3d at 1115. klein cosmetics corp. v. lenox laboratories, inc., 815 f.2d 500, 504 (8th cir. 1987) business entity registrations of third parties whose marks or business names contained process of lovely skin’s trademarks. based upon this evidence, the district court strong by having attained a strong secondary meaning. seetelemedcorp.v.tel-med, requirement. rather, the district court’s reference to the lack of identity merely principal register, but that is ‘capable of distinguishing the applicant’s goods or to prepare and file an application to register the mark lovelyskin on the principal injury to business reputation in violation of nebraska law. ishtar counterclaimed, infringer’s intent to ‘pass off’ its goods as those of the trademark owner; (5) incidents 1999. however, the pto refused to register either of the marks on the principal association might be inferred, such as years of use, extensive amount of sales and a “trademark” is “any word, name, symbol, or device, or any combination their registrations. rather, it is whether ishtar has met its burden of establishing a in march 2006, lovely skin became aware of the website, purchase are important factors in considering whether the degree of care exercised by § 1091). therefore, “a mark that is ineligible for registration on the principal register prima facie case that lovely skin’s trademarks lacked acquired distinctiveness at the lovely skin’s use of its trademarks had been substantially exclusive in the five years for the eighth circuit parties that registered either trademarks or business names similar to lovely skin’s lovely skin first argues that the district court erred by finding that lovely written instances of confusion” between lovelyskin.com and ishtar’s website. ii. see also curtis-stephens-embry, co. v. pro-tek-toe skate stop, co., 199 f.2d 407, applications to register its marks, lovelyskin and lovelyskin.com. green were not registrable because they lacked acquired distinctiveness at the time of their cathy huftless, lovely skin’s director of internet sales. the customer was replying sioux falls v. first nat. bank, south dakota, 153 f.3d 885, 888 (8th cir. 1998). to hadbeensubstantiallyexclusive,andneitherhenorcarnabycanrememberifcarnaby care prods., llc, no. 8:10-cv-00087, 2012 wl 4711917, at *8 (d. neb. oct. 3, whether or not the district court applied the correct standard of “substantially inc., 588 f.2d 213, 219 (7th cir. 1978). lovely skin presented no direct evidence, exclusive use as of the date of their registrations.” lovely skin, inc. v. ishtar skin inc., 586 f.3d at 1358. in order to satisfy its burdens, ishtar sought to demonstrate on lovely skin’s claims. that evidence of third-party registrations was insufficient to weaken a trademark’s descriptive, unless the mark has become distinctive of the registrant’s goods in lovely skin, inc. lovely skin’s print and internet advertisements more prominently display the marks united states court of appeals expenditures and revenue growth. additionally, lovely skin sought to prove its -14- reverse without remanding if “the record permits only one resolution of the factual from approximately $300,000 in 2002, to $700,000 in 2003, to $5.1 million in 2005, keebler co., 624 f.2d at 373; see also 15 u.s.c. § 1064. if the cancellation action is one person, including a unique service, from the services of others and to indicate the invalidity. district court specifically relied on three of the third-party registrations that ishtar of confusion to succeed, we affirm the district court’s judgment for ishtar on all four exists is a question of fact reviewed for clear error. kemp v. bumble bee seafoods, skin can make a showing that its marks had acquired distinctiveness at the time of -12- in 1999, skin specialists hired attorney keith green to file -4- of their price point, their efficacy, and their complex ingredients. therefore, the erroneously canceled lovely skin’s trademark registrations, this error did not affect the lanham act provides that a registration issued under the act “shall be ishtar skin care products, llc livelyskin.com. after a bench trial, we review the district court’s legal conclusions of the third-party products that lovely skin sells than lovely skin’s own trademarks. similarly, a “service mark” is “any word, name, symbol, or device, or any through its website www.lovelyskin.com. proceeding.” id. reverse if its factual finding constitutes clear error. shoppers fair of ark., inc. v. exclusive use,” we are confident that if it did, the district court’s conclusion is clearly (8th cir. 1999).4 lovely skin’s trademarks were registered. nor did it offer evidence of how, or even inc. v. advanced sys. concepts, inc., 638 f.3d 1137, 1149 (9th cir. 2011). here, there sharokin vardeh, registered www.livelyskin.com with internet domain registrar lllllllllllllllllllll plaintiff - appellant party seeking cancellation, had both the initial burden to establish a prima facie case unsubstantiated statement that since 2009 lovely skin was “seeing quite a bit of they were recognized by consumers”). actual confusion did exist, one would expect to see more evidence of it. and sixth, § 2(f), lack of acquired distinctiveness at the time of registration is a valid ground for co-rect prods., 780 f.2d at 1330 (citing squirtco, 628 f.2d at 1091). “[t]he relative here, “[a]ny ground that would have prevented registration in the first place qualifies filed: march 13, 2014 2012) (emphasis added). whether the district court applied the correct legal standard instances both orally and a couple written instances of confusion” between meaning at the time of their registrations. see aromatique, inc., 28 f.3d at 870; email to huftless at “cathy@livelyskin.com.” dr. schlessinger also claims that since matter, lovely skin argues that the district court applied the incorrect legal standard by the applicant in commerce for five years before the date on which the claim of cancellation establishes a prima facie showing of invalidity, “[t]he burden of cathy@livelyskin.com, rather than cathy@lovelyskin.com, and dr. schlessinger’s registrations. www.livelyskin.com, which sells many of the same products that lovely skin sells godaddy on november 14, 2005. at the time ishtar registered its website, it was establish a prima facie case of no acquired distinctiveness. id. if the party seeking variousclaimsbydemonstratingthatishtar’swebsitecreatesalikelihoodofconfusion that discussed above, to satisfy its ultimate burden to establish by a preponderance of 1 199 f.2d at 414. conclusion, it found that “ishtar has satisfied its burden to rebut the presumption that confusion exists, the district court considered the following six factors from squirtco court’s findings with respect to the first, second, fifth, and sixth squirtco factors. for the district of nebraska - omaha curtis-stephens-embry co., 199 f.2d at 414. ishtar did not present any evidence ____________ or prevent lovely skin’s trademarks from acquiring distinctiveness. see id.; district court’s finding that consumers will exercise a greater degree of care in making in its evaluation of the six squirtco factors, the district court first found that b. brought this lawsuit in march 2010. ishtar answered, asserting affirmative defenses, but were not identical. third, the district court found that the two businesses compete did not demonstrate actual confusion because the customer clearly knew that she was cir. 1985). under § 2(f), “[t]he director may accept as prima facie evidence that the lovelyskin.com mark. the pto accepted lovely skin’s declarations as prima advertising expenditures and sales growth during the five years preceding the performed such an investigation. the pto registered the trademark lovelyskin say the district court committed clear error. see schaub, 638 f.3d at 915. because as a counterclaim in the infringement suit or as a separate and independent action. submitted: november 22, 2013 lacked acquired distinctiveness at the time of their registrations. the only evidence after a bench trial, the district court’s finding that no likelihood of confusion 99 (8th cir. 1996) (holding that “even several isolated incidents of actual confusion” evidence is not of “any real substance” to whether lovely skin’s marks had become facie evidence of acquired distinctiveness and registered the marks. see 15 u.s.c. registrant.” id. the court then must “decide whether the party seeking cancellation lovely skin then timely filed this appeal. the burden of persuasion to rebut the trademark’s presumption of validity by a is a debatable issue, see wise v. bowersox, 136 f.3d 1197, 1203 (8th cir. 1998), that a public relations consultant, to garner national media coverage for its brand. as a advertisedbydistributingacatalogthroughthemail,purchasingprintadvertisements, conclude that reversal is appropriate. with each other in the high-end cosmetic sales industry. fourth, the district court rovira biscuit corp., 624 f.2d 366, 373 (1st cir. 1980). first, the alleged infringer preceding the application; (2) carnaby has no independent recollection of preparing bears the ‘burden to establish a prima facie case’ that the registration is invalid.” id. 3 on all four counts of lovely skin’s complaint. lovely skin appeals. for the reasons associated in consumers’ minds with a particular source prior to their registrations. lack of acquired distinctiveness at the time of their registrations, which is a valid before wollman, colloton, and gruender, circuit judges. owner’s mark; (2) the similarity between the owner’s mark and the alleged infringer’s sanders co., 328 f.2d 496, 499 (8th cir. 1964) (holding that a finding of acquired purchases. while lovely skin sells some products for as little as $3, the average principal register on june 19, 2007. of confusion because consumers will exercise a high degree of care when making their that ishtar presented, though, was several federal trademark registrations and state register pursuant to § 2(f) of the lanham act, which permits merely descriptive distinctiveness is made.” 15 u.s.c. § 1052(f). a mark registered on the principal green delegated the task to kristin carnaby, an associate at his law office. in its sense.”), abrogated on other grounds by fogerty v. fantasy, inc., 510 u.s. 517 lovelyskin,inc.(“lovelyskin”)broughtafour-countcomplaintagainstishtar validity is a strong one,” zobmondo entm’t, llc v. falls media, llc, 602 f.3d 1108, 780 f.2d at 1328 n.5. if the district court applied the incorrect standard, we may grants the “owner of a trademark used in commerce” the right to apply for registration commerce for at least the five years immediately before the date of this statement.” in concluding that ishtar had established a prima facie case that lovely skin’s -3- news-tribune, a div. of nw. publ’ns, inc. v. mesabi publ’g co., 84 f.3d 1093, 1098- been”); see also l.d. kichler co. v. davoil, inc., 192 f.3d 1349, 1352 (fed. cir. iii. conclusion purchase from lovelyskin.com is approximately $100. lovely skin also sells some another omaha dermatologist; (2) “lovely skin, inc.,” a business incorporated by a presented: (1) love your skin, a federally registered trademark registered to accordingly, ishtar did not satisfy its initial burden to establish a prima facie case that address of the person she was copying. thus, the district court did not commit clear light of the fact that lovely skin’s marks are merely descriptive. record during prosecution and any additional evidence introduced in the cancellation even if we were to find that ishtar presented sufficient evidence to satisfy its lovely skin marks had acquired distinctiveness through five years of continuous and “high end” and “sophisticated” products. driscoll further explained that the products 509 f.3d 406, 413 (8th cir. 2007). “[w]here there are two permissible views of the evidence and, thus, were not entitled to registration. see curtis-stephens-embry co., this determination was a permissible view of the evidence, and therefore, we cannot as a valid ground for cancellation.” cunningham v. laser golf corp., 222 f.3d 943, were identical to ishtar’s mark. the district court expressly considered the marks’ theirregistrationsthroughsubstantiallyexclusiveuseforthefiveprecedingyears. see similarly, the national newspapers and magazine articles that lovely skin identified and mixed questions of law and fact de novo and its factual findings for clear error. because both parties operate in a niche market selling expensive products. finally, issue.” pullman-standard v. swint, 456 u.s. 273, 292 (1982). either way, we strong secondary meaning. see frosty treats, inc., 426 f.3d at 1005 (“[d]irect we first consider lovely skin’s argument that the district court erred in 2010. lovely skin alleges that it experienced an instance of consumer confusion if, the third parties promoted or advertised these marks during those years or whether and to $13 million in 2011. counts. trademarks were actually used by third parties, that they were well promoted or that mark; (3) the degree to which the products compete with each other; (4) the alleged however, with this evidence, ishtar only established that: (1) green did not perform schlessinger, a dermatologist, and his wife nancy schlessinger. lovely skin retails advertising, and any additional evidence showing wide exposure of the mark to registrations. accordingly, we reverse the district court’s judgment canceling the lllllllllllllllllllll defendant - appellee that the use of lovely skin’s trademarks had not been substantially exclusive in the degree of commercial strength is a permissible view of the evidence, especially in demonstrate that the use of lovely skin’s trademarks was not substantially exclusive canceling lovely skin’s trademark registrations, and we affirmits judgment for ishtar *1 (t.t.a.b. aug. 30, 1989). “due to [a registered mark’s] presumption of validity, strengthareitsconceptualstrengthanditscommercialstrength. networkautomation, mark and ishtar’s mark be identical in order for the second factor to support a finding five years preceding their applications and, therefore, establish that the trademarks lovely skin carries both dermatologist-recommended, third-party skin care products 1115 (9th cir. 2010). as relevant here, the presumption of validity that attaches to a § 2(f) registration includes a presumption that the registered mark has acquired relied on the testimonies of attorneys green and carnaby and dr. schlessinger. may prove “any legal or equitable defense or defect . . . which might have been after evaluating the six squirtco factors in light of the evidence presented, the district defense of its registrations, lovely skin presented evidence of its significant lovelyskin.com and ishtar’s website. vardeh testified, however, that she had never actual confusion was an exhibit in which a consumer addressed an email to -5- sales may not be probative of secondary meaning is to defy both logic and common filed within five years of the registration of the mark sought to be canceled, as it was evidence, the [district court’s] choice between them cannot be clearly erroneous.” (8th cir. 2003) (“circumstantial evidence is evidence from which consumer the district court’s conclusion; the customer was replying to a confirmation email that registrations “did not show, and there was no effort made to prove, where they had products. thus, the district court’s finding that lovely skin’s trademarks lack a high skin’s marks had not acquired distinctiveness by the time they were registered. prima facie evidence of . . . [a] registrant’s exclusive right to use the registered mark that it sells, rather than to the commercial strength of lovely skin’s marks. indeed, the district court found that there was scarce evidence of actual confusion, and that if lovely skin had a heavy burden to show that its marks currently are commercially distinctiveness based on lovely skin’s ownership of the registration for burden of proof in an infringement action.”). therefore, even though the district court the fact question; that is, ishtar did not demonstrate that lovely skin’s trademarks v. gold seal, inc., 28 f.3d 863, 870 (8th cir. 1994). confusion. experienced a single instance of confusion. the district court concluded that the email evidence of third parties using marks similar to lovely skin’s trademarks, testimony concluded that ishtar had met both its initial burden and ultimate burden of persuasion trial. at trial, ishtar sought to demonstrate that lovely skin’s trademarks had not because it is ‘merely descriptive’ of the goods or services may be registered on the claims, lovely skin was required to demonstrate, among other things, that a inc., 398 f.3d 1049, 1053-54 (8th cir. 2005). in determining whether a likelihood of consumers.”); reader’s digest ass’n, inc. v. conservative digest, inc., 821 f.2d 800, permissible view of the evidence. § 1052(f). “[t]he federal officials who register a mark . . . have some expertise in “substantially exclusive” use, as the statute requires. see 15 u.s.c. § 1052(f). and currently is unaware of any investigation performed by carnaby into whether prohibits, however, the registration of marks on the principal register that are merely validity of lovely skin’s trademark registrations and establish a prima facie case of v. sensoryeffects flavor co., 613 f.3d 754, 763 n.3 (8th cir. 2010); neb. rev. st. 87- -10- practice, skin specialists.1 district court refused to allow this one factor to be determinative and properly likelihoodofconfusionexistsbetweenlovelyskin’strademarksandishtar’swebsite. website. on appeal, lovely skin argues that the district court’s finding of no distinctiveness. see heartland bank v. heartland home fin., inc., 335 f.3d 810, 819 that lovely skin sells are “prestige” products, rather than “mass” products, because registration of its marks. such evidence can demonstrate that a mark has acquired california aesthetician in 2003; and (3) “lovely nails & skin care,” a business no. 12-3631 court attributed lovely skin’s revenue growth to the fame of the third-party products ____________ services,’ may be registered on the supplemental register.” in re bush bros & co., -2- demonstrate that those marks had acquired distinctiveness. see 15 u.s.c. § 1052(f). registrations of its trademarks. second, lovely skin argues that the district court lovely skin was incorporated in nebraska in 2003 and is owned by dr. joel dates of the registrations or had been discontinued, or how exclusive their use had with lovely skin’s trademarks. driscoll, lovely skin’s public relations consultant, thereof—used by a person . . . to identify and distinguish his or her goods, including schlessinger regarding lovely skin’s claim of substantially exclusive use. lovely in commerce, proof of substantially exclusive and continuous use thereof as a mark distinctiveness, i.e., secondary meaning, “the chief inquiry is whether in the likelihood of confusion exists between lovely skin’s trademarks and livelyskin.com. skin defended its registrations by presenting evidence of its substantial advertising been used (other than at the place of business), whether they were in use after the attorneys who prepared the applications have no recollection of any investigation into in commerce.” 15 u.s.c. § 1115(a). it also “provides . . . two avenues of affirmative skin’s website appeared toward the top of the search results web page when an lovely skin’s claims of trademark infringement, false designation of origin, unfair contacting lovely skin and merely made a typographical error. the exhibit supports distinctiveness, or secondary meaning, at the time of its registration. aromatique, inc. -17- lovely skin’s claim of substantially exclusive use at the time they applied for show a likelihood of confusion, lovely skin must show a probability of confusion, -13- skin specialists assigned the website to lovely skin in 2003. has satisfied its ultimate burden of persuasion, based on all the evidence made of price from approximately $3 to $400. lovely skin primarily sells the products the district court considered all of the squirtco factors and determined that no 805 (d.c. cir. 1987) (“[t]o say that proof of extensive advertising and substantial usage.” scarves by vera, inc. v. todo imports ltd., 544 f.2d 1167, 1173 (2d cir. -7- the 2004 lovelyskin application or of performing an investigation; and (3) dr. seeking cancellation of the registrations of lovely skin’s two trademarks. after a lovely skin also argues that the district court clearly erred in concluding there 884 f.2d 569, 570 (fed. cir. 1989) (internal citation omitted) (quoting 15 u.s.c. see curtis-stephens-embry co., 199 f.2d at 414. therefore, it cannot overcome the erred in finding that there is no likelihood of confusion between its trademarks and evidentiary tool, and the fact of registration does not affect the plaintiff’s ultimate is no dispute that lovely skin’s marks are descriptive, and a descriptive mark allegedinfringermayseekcancellationoftheregistrant’strademarkregistrationeither engine companies to drive customers to its website. by purchasing keywords, lovely regarding how these third parties had used the marks, if at all, in the five years before lovely skin’s website was originally operated by dr. schlessinger’s medical found that ishtar did not intentionally seek to infringe on lovely skin’s marks. fifth, was not substantially exclusive and, thus, might demonstrate that lovely skin’s 4 trademark registrations and otherwise affirm its judgment in favor of ishtar. skin no longer has evidence of its trademarks’ substantially exclusive use and that the we need not decide. if the district court applied the correct legal standard, we would ground for cancellation. see neapco, inc., 1989 wl 274388, at *1. ishtar, as the canceling lovely skin’s trademark registrations. the district court canceled lovely distinctiveness is a question of fact reviewed for clear error); see also co-rect prods., to show that lovely skin’s trademarks lacked acquired distinctiveness at the time of although the district court initially stated the correct standard, when it reached its lovely skin also argues that the district court erred in finding for ishtar on ishtar sought to cancel the registrations of lovely skin’s trademarks based on curtis-stephens-embry co., 199 f.2d at 414 (finding evidence of third party ams. united for separation of church & state v. prison fellowship ministries, inc., 2 internet user searched for any of the purchased keywords. lovely skin paid each operating in 2003 in pennsylvania. evidence of third parties using marks similar to facie case that lovely skin’s marks had not acquired distinctiveness at the time of presumption of validity that includes a presumption that its trademarks had secondary commerce. 15 u.s.c. §§ 1052(e)-(f). in determining whether a mark has acquired (fed. cir. 1988)). in a § 2(f) case, this means that the party seeking cancellation must the district court found for ishtar on all of lovely skin’s claims and on ishtar’s between lovely skin’s trademarks and livelyskin.com. cosmeceutical skin care products, which are cosmetics with pharmaceutical benefits. lovely skin’s marks were both conceptually and commercially weak. second, it mark has become distinctive, as used on or in connection with the applicant’s goods skin sells are “prestige” products. through its website. ishtar, a california limited liability corporation owned by ____________ on may 15, 2009, lovely skin sent a letter to vardeh, which was returned found that lovelyskin.com and livelyskin.com were very similar in appearance meaning.”). lovelyskinargues,however,thatitsincreasingadvertisingexpenditures with that background in mind, we turn to lovely skin’s two arguments on all four counts of lovely skin’s complaint require a finding of a likelihood counterclaims, resulting in the cancellation of lovely skin’s trademark registrations. cosmeceutical market in which lovely skin and ishtar operate reduces the likelihood lovely skin sent her regarding her order and merely made an error in the email likelihood of confusion. “[t]he kind of product, its costs and the conditions of strong presumption of validity that registration affords lovely skin’s trademarks. skin care products, llc (“ishtar”), alleging trademark infringement and false co., 824 f.2d 622, 626 (8th cir. 1987) (“[a] mark’s registered status is only an f.3d 1352, 1356 (fed. cir. 2009). thus, a party seeking to cancel a registration has preponderance of the evidence. id. “initially, the party seeking cancellation also trademarks had not acquired distinctiveness at the time of their registrations, the their registrations. lovely skin’s trademarks can demonstrate that the use of lovely skin’s trademarks consumer’s mind the mark has become associated with a particular source.” co-rect of green and carnaby about the trademarks’ application process, and testimony of dr. of the goods, even if that source is unknown.”3 414 (8th cir. 1952). thus, lovely skin’s trademarks are entitled to a strong defense to a party charged with infringement of a registered mark.” keebler co. v. through five years of continuous and “exclusive” use, rather than through assessing if it is entitled to registration.” zobmondo entm’t, llc, 602 f.3d at 1115; l.l.c., 76 f. app’x 123, 124 (9th cir. 2003); see generally gen. mills, inc. v. kellogg -11- prods., inc. v. marvy! advertising photography, inc., 780 f.2d 1324, 1332-33 (8th gruender, circuit judge. at 1358 (quoting yamaha int’l corp. v. hoshino gakki co., 840 f.2d 1572, 1579 n.9 were then placed on the supplemental register.2 courtfoundnolikelihoodofconfusionbetweenlovelyskin’strademarksandishtar’s


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