IP Law Daily, TRADEMARK—TTAB: Trademark application of skincare device exclusive distributor found void ab inito, (Feb 19, 2025)

By Patricia K. Ruiz, J.D.

The TTAB found the distributor did not own the applied-for marks at the time it filed its use-based application.

The Trademark Trial and Appeal Board (TTAB) found void ab inito an application for the registration of two marks (VIVACE and VIVACE EXPERIENCE) by the exclusive licensee to distribute a skincare device. The TTAB found that the applicant’s affirmative defenses did not apply, that a likelihood of confusion existed, and that the petitioner owned the mark in question when the applicant sought registration (Sung Hwan E&B Co. Ltd. v. Aesthetics Biomedical, Inc., No. 92074719 (T.T.A.B. Feb. 14, 2025)).

Application. Aesthetics Biomedical, Inc., (ABM) owns Principal Register registrations for the marks VIVACE, identifying “radio frequency microneedling device” in International Class 10 and THE VIVACE EXPERIENCE for “providing personalized beauty spa services, namely, cosmetic body care and microneedle services” in International Class 44. Sung Hwan E&B Co. Ltd., d/b/a SHEnB Co., sought cancellation of the registrations on the ground that they are void ab initio due to non-ownership, on the ground of likelihood of confusion, and on the ground of fraud. SHEnB also alleged ownership of application Serial No. 90051979 for the mark VIVACE for “radio frequency micro-needling devices.” ABM filed an answer denying salient allegations and raising affirmative defenses.

Agreements. From February 2016 through July 2022, ABM acted as SHEnB’s exclusive licensed distributor for the VIVACE device and needle tips. In 2017, the parties amended their distribution agreement to identify ABM as the exclusive licensee to distribute the VIVACE device and needle tips. In 2018, ABM executed a non-manufacturing agreement with SHEnB, agreeing not to manufacture RF microneedling devices in the U.S. without the express approval and consent from SHEnB. The agreement assigned to ABM the responsibility of first year warranty repairs and labor costs.

Statutory entitlement. In every inter partes case, the plaintiff must establish its statutory entitlement to bring an opposition or cancellation proceeding. To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (1) an interest falling within the zone of interests protected by the statute; and (2) proximate causation. Demonstrating a real interest in cancelling registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in damage by the maintenance of a mark demonstrates damage proximately caused by registration of the mark.

SHEnB’s CEO testified regarding SHEnB’s invention and development of an advanced radio frequency (RF) microneedling device, named VIVACE, for aesthetic treatment of the skin, as well as the product’s expanded use in the U.S. following clinical trials, FDA approval, and entering into an agreement with ABM as its exclusive U.S. distributor and licensee. The TTAB found this testimony evidences SHEnB’s proprietary and commercial interest sufficient to establish entitlement to a statutory cause of action on the ownership ground. Once a petitioner has established entitlement on one pleaded ground, it has established its entitlement for any other ground, the TTAB explained.

Assignment of trademark rights. The 2017 amended distribution agreement identifies ABM as a licensee. SHEnB’s position is that ABM’s status as a trademark licensee is reflected in the agreement, allowing use of the VIVACE marks but no assignment of ownership or right to register VIVACE trademarks. The parties agreed that the 2017 amended distribution agreement does not contain the clear and unambiguous language necessary to license or assign trademark rights.

Equitable estoppel. The elements required to establish the defense of equitable estoppel are: (1) misleading conduct, which may include not only statements and action by silence and inaction, leading another to reasonably infer that rights will not be asserted against it; (2) reliance upon this conduct; and (3) due to this reliance, material prejudice if the delayed assertion of such rights is permitted. The defense must be tied to a party’s registration of a mark, not to its use of the mark.

None of SHEnB’s actions could be considered to have misled ABM into believing that SHEnB would not object to the registration of the VIVACE marks nor file a cancellation action, even despite SHEnB’s active representations that ABM could use the VIVACE marks. The evidence shows that SHEnB objected to the registrations and requested that ABM assign the trademarks once it learned about them and that ABM refused to do so, precipitating the cancellation action. Finding this conduct does not constitute affirmatively misleading conduct regarding ABM’s registration of the trademarks, the equitable estoppel defense failed.

Acquiescence. To establish the defense of acquiescence, a defendant must prove that the plaintiff’s conduct amounted to an assurance by the plaintiff to the defendant, either express or implied, that plaintiff will not assert his trademark rights against the defendant. The defense must be tied to a party’s registration of a mark, not to a party’s use of the mark. The TTAB found the conduct described by ABM does not support a finding that SHEnB acquiesced to ABM’s registrations of VIVACE and its formatives.

Likelihood of confusion. To establish priority on a likelihood of confusion claim under Trademark Act §2(d), a party must prove that, vis-á-vis the other party, it owns a mark or trade name previously used in the U.S. and not abandoned. A party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use, trade name use, or through use analogous to trademark use. For SHEnB to establish priority, it must prove by a preponderance of the evidence that it has a proprietary interest in the mark VIVACE and that the interest was obtained prior the earliest of either ABM’s constructive use date—the filing date of its applications for registration, May 11, 2017. The TTAB found SHEnB has priority with respect to the VIVACE mark, as: (1) SHEnB did not abandon the VIVACE mark via the sole importer clause in the parties’ agreement; (2) the sole importer clause is not inseparable from the mark; (3) the sole importer provision has been terminated; and (4) ABM cannot argue abandonment based on lack of licensor control.

Applying the DuPont factors, the TTAB found that a likelihood of confusion exists between the VIVACE and THE VIVACE EXPERIENCE, given the similarity between and the relatedness of the marks.

Ownership. Finally, the TTAB found SHEnB is the owner of and was the first to use the VIVACE mark in the U.S. prior to any distribution agreement between the parties. Because ABM was not the owner at the time it filed its used-based application, the TTAB found the VIVACE registration to be void ab inito.

The Case is Cancellation No. 92074719.

Judge: Goodman, C.

Attorneys: Scott W. Johnston (Merchant & Gould P.C.) for Sung Hwan E&B Co Ltd. Laura J. Zeman-Mullen (Zeman-Mullen & Ford, LLP) for Aesthetics BioMedical, Inc.

Companies: Aesthetics Biomedical, Inc.; Sung Hwan E&B Co. Ltd.

Cases: Trademark USPTO