United States District Court, E.D. Virginia, Alexandria Division
JAMES C. CACHERIS JUDGE
This matter is before the Court on Plaintiff Seacret Spa International’s Motion for Summary Judgment [Dkt. 21], and Defendants Michelle K. Lee and the United States Patent and Trademark Office’s (“USPTO”; collectively, “Defendants”) Cross Motion for Summary Judgment [Dkt. 25], and Defendants’ Motion to Exclude the Opinion of Thomas J. Maronick [Dkt. 29]. For the following reasons, the Court denies the Defendants’ Motion to Exclude the Opinion of Thomas J. Maronick, denies the Plaintiff’s Motion for Summary Judgment, and grants the Defendants’ Cross Motion for Summary Judgment.
Plaintiff Seacret Spa International (“Plaintiff”) is a direct sales organization specializing in skin care products containing ingredients or chemicals from the Dead Sea. On February 9, 2006, Plaintiff filed a federal trademark application pursuant to Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a) for a stylized mark (the “SEACRET” mark) for “products containing ingredients from the Dead Sea, namely, non-medicated skin care preparations, namely moisturizers, facial cleansers, facial peels, masks, lotions, creams, scrubs, soaps, nail care preparations, hand creams, cuticle oils; after shave in international class 3.” (A561 [Dkt. 14] (Internal quotations omitted).) On August 7, 2006, the Trademark Examining Attorney issued an Office Action refusing registration on the basis that the stylized “SEACRET” mark was likely to be confused with previously registered marks held by Proctor and Gamble Company. (Id.) These previously registered marks included the standard character mark “SECRET” for the goods body spray, and a stylized form of “SECRET” for the goods personal deodorant. (Id.) Plaintiff responded to the office action, and on April 20, 2007, the examining attorney maintained the refusal and suspended the application pending the outcome of another trademark application filed by Plaintiff. (Id.) On June 29, 2012, the examining attorney removed the application suspension and issued a final refusal to register the “SEACRET” mark. (A562.)
Plaintiff admits that the “SEACRET” mark and the “SECRET” marks are phonetic equivalents, both pronounced as “secret”. (Pl.’s Mem. in Supp. [Dkt. 22] at 6.) Plaintiff sells its products primarily through a direct sales system or in kiosks. (Pl.’s Ex. A [Dkt. 23-2], ¶ 3.) Plaintiff does not market its products to traditional retailers or drug stores. (Id.) However Plaintiff’s products can be found through third party online retailers. (A321-323, A342-344.) Plaintiff’s products range in price from $14.95 to $349.95. However, the Plaintiff’s application does not contain any restrictions as to trade channels or price ranges. (A561.)
II. Legal Standard
Expert opinion testimony is governed by Federal Rule of Evidence 702, which provides:
A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; . . .
Fed. R. Evid. 702. Expert testimony is therefore admissible under Federal Rule of Evidence 702 “if it concerns (1) scientific, technical, or other specialized knowledge that (2) will aid the jury or other trier of fact to understand or resolve a fact at issue.” Westberry v. Gislaved Gummy AB, 178 F.3d 257, 260 (4th Cir. 1999). A district court’s decision with respect to the admissibility of expert scientific testimony “is always a flexible one, and the court’s conclusions necessarily amount to an exercise of broad discretion guided by the overarching criteria of relevance and reliability.” Oglesby v. Gen. Motors Corp., 190 F.3d 244, 250; see also Cooper v. Smith & Nephew, Inc., 259 F.3d 194, 200 (4th Cir. 2001)(noting the Supreme Court’s statement in Kumho Tire that trial judges “must have considerable leeway in deciding in a particular case how to go about determining whether particular expert testimony is reliable”)(quoting Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999)). This is particularly true where there is no jury trial to be conducted, as “[t]he gatekeeping function of the court is relaxed where a bench trial is to be conducted, because the court is better equipped than a jury to weigh the probative value of expert evidence.” Traxys North America, LLC v. Concept Mining, Inc., 808 F.Supp.2d 851, 853 (E.D. Va. 2011).
Summary judgment is appropriate only where, on the basis of undisputed material facts, the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Where, as here, neither party disputes the material facts, the case is ripe for disposition on summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1998).
Section 21 of the Lanham Act, provides that an applicant who is “dissatisfied with the decision” of the Trademark Trial and Appeal Board can either “appeal to the United States Court of Appeals for the Federal Circuit, ” or can seek a “remedy by a civil action” against the Director of the USPTO in district court. 15 U.S.C. § 1071(a). The parties may not present new evidence bearing on registrability in an appeal to the Federal Circuit, but they may present new evidence in a “remedy by civil action” in a district court. See Kappos v. Hyatt, 132 S.Ct. 1690, 1701 (2012); Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014). “[W]here new evidence is submitted, de novo review of the entire record is required because the district court cannot meaningfully defer to the PTO’s factual findings if the PTO considered a different set of facts.” Swatch, 739 F.3d at 155; see also Glendale Int’l Corp. v. U.S. Patent & Trademark Office, 374 F.Supp.2d 479, 484-85 (E.D. Va. 2005)(“[W]here new evidence is presented to the district court on a disputed fact question, a de novo finding will be necessary to take such evidence into account together with the evidence before the board”). However, “the district court may, in its discretion, consider the proceedings before and findings of the Patent Office in deciding what weight to afford an applicant’s newly admitted evidence.” Swatch, 739 F.3d at 155.
The Court will first address the Defendants’ motion to exclude the opinion testimony of Dr. Thomas J. Maronick then turn to the parties’ cross motions for summary judgment. Defendants argue that Dr. Maronick’s testimony should be excluded because it is based on a study of the use of the “SEACRET” mark in the marketplace rather than the uses described in the application and is therefore irrelevant. (Def.’s Mem. to Exclude [Dkt. 30] at 6-7.) The Court agrees that Dr. Maronick’s reliance on marketplace usage and his failure to perform any kind of survey on the issue of potential confusion between the “SECRET” and “SEACRET” marks severely limits the probative value of his testimony. As the relevant inquiry in a registration proceeding involves the mark and usage described in the application rather than as they appear in the marketplace, both the basis and the relevance of Dr. Maronick’s opinion are suspect. However, the parties here have agreed that any issues of fact should be resolved at this stage on the basis of the record before it, so the Court need not worry about any potential for jury confusion. After all, “[t]here is less need for the gatekeeper to keep the gate when the gatekeeper is keeping the gate only for himself.” United States v. Brown, 415 F.3d 1257, 1269 (11th Cir. 2005). Accordingly, the Court notes the limited usefulness of Dr. Maronick’s testimony, but it denies the defendants’ motion to exclude his opinion testimony.
Turning now to the cross motions for summary judgment, because the Plaintiff has presented new evidence on the issue of the likelihood of confusion between the “SEACRET” mark and the “SECRET” marks, the Court will review the TTAB’s decision denovo. See, Swatch, 739 F.3d at 155. The Lanham Act allows the USPTO to refuse to register a mark when it “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §1052(d). “[T]he TTAB evaluates likelihood of confusion by applying some or all of the 13 factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973).” B & B Hardware, Inc. v. Hargis ...