Wednesday, December 06, 2006

Citable No. 50: "GENUINE RIDE SKIN CARE" & Design Not Confusingly Similar to "GENUINE SKIN," Says TTAB

The Board dismissed a Section 2(d) opposition to registration of the mark GENUINE RIDE SKIN CARE & Design (shown immediately below) for skin care products, finding it not confusingly similar to the marks GENUINE SKIN, GENUINE BODY, GENUINE SPA, and GENUINE FACE for skin soaps and lotions. Truescents LLC v. Ride Skin Care, L.L.C., 81 USPQ2d 1334 (TTAB 2006).

The Board first disposed of two preliminary issues: Opposer Truescents' claim of ownership of a family of GENUINE marks, and Applicant Ride's purported "fair use" defense. As to the former, the Board once again rejected the family-of-marks claim because Truescents "failed to present any evidence showing that it has advertised and promoted its asserted GENUINE marks together as a family...." As to Applicant's fair use claim, the Board pointed out that, although a fair use defense may be available in a civil action, "it has no applicability in inter partes proceedings before the Board, which deal with the issue of registrability." Moreover, even if the defense were available, Applicant Ride could not rely on it because it was "not using the words GENUINE SKIN merely in a non-trademark, descriptive manner, but instead has included those words as part of the mark it seeks to register."

Turning to application of the du Pont factors, the Board began with Opposer's mark GENUINE SKIN, "because that is the mark upon which opposer has based essentially all of its likelihood of confusion arguments and because that is the mark ... which on its face arguably resembles applicant's mark most closely."

As to the goods, the Board found them legally identical or otherwise closely related. Ride argued that its products are marketed to purchasers in the "motorcycle market" rather than in the mass market retail channels in which Opposer's products appear. Of course, that argument had no traction, since neither Applicant's nor Opposer's identification of goods is limited as to trade channels or purchasers.

The key issue, then, was the similarity of the marks. The Board found the word RIDE to be the dominant feature in Applicant's mark; the words GENUINE SKIN CARE "contribute relatively less to the source-indicating significance of the mark." As to Opposer's mark, the dominant feature is GENUINE, since SKIN "is generic or descriptive and essentially without source-identifying significance." GENUINE is "inherently a weak, laudatory term which is entitled only to the narrowest scope of protection." Forty-six third-party registrations submitted by Applicant, in which the word GENUINE is disclaimed, corroborated "the essentially laudatory meaning and significance of GENUINE." The Board found that the marks look different, sound dissimilar, have different connotations, and create different commercial impressions, leading to the conclusion that the marks are "dissimilar rather than similar."

"... any similarity between the marks which results from the presence of that laudatory and weak word in both marks is greatly outweighed by the obvious dissimilarities between the marks, most importantly the presence of the arbitrary word RIDE in applicant's mark and the absence of that word in opposer's mark."

In short, the Board found the dissimilarity between the marks to be dispositive.

As to Opposer's other three marks -- GENUINE BODY, GENUINE SPA, and GENUINE FACE -- each of these marks is "even less similar to applicant's mark than is the GENUINE SKIN mark." Again, "the dissimilarity of the marks is dispositive in each case."

The Board therefore dismissed the opposition.

Text Copyright John L. Welch 2006.


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