CAFC Affirms TTAB Ruling in "ML" Skin Care Products Case

In an enervating but nonetheless precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in In re Mighty Leaf Tea, Serial No. 76678969 (May 8, 2009) [not precedential]. The Board had found the mark ML (in standard character form) for various personal care products and skin care preparations, likely to cause confusion with the registered mark shown immediately below, for "quite similar" skin care products. In re Mighty Leaf Tea, 94 USPQ2d 1257 (Fed. Cir. 2010) [precedential].


Appellant argued before the TTAB that "the existence of many similar marks showed the weakness of the registered mark, such that consumers would look to fine distinctions to distinguish the sources of goods." It pointed to the registered marks MLE, MLUXE, M’LIS, JML, and AMLAVI, and pending applications for MLAB, TMLA, FEMLOGIC, and SIMLINE, all for personal care or skin care products.

The Board observed that inclusion of the letters “ML” in other words or aggregates does not render these marks so similar and weak that the public would be alert to small differences.

Before the CAFC, Mighty Leaf contended that the Board erred in its analysis of the du Pont factors, and particularly the sixth factor: “The number and nature of similar marks in use on similar goods.” Appellant again argued that "consumers are already conditioned to look to minor distinctions in marks that include the letters 'ML.'" Therefore, Mighty Leaf Tea contended, the additional words MARK LEES distinguish the registrant’s mark from ML standing alone.

The CAFC disagreed, and instead sided with the Board:

The PTO states that the letters “ML” in various character strings does not establish these two letters as a common element, such as “Broadway,” that has acquired an understood meaning or suggestiveness. We agree that the occurrence of two letters in longer words or strings does not of itself establish a “common element,” for there was no evidence that the two letters “ML” had any recognized meaning or significance within the longer strings. The Board appropriately gave little weight to the proffered evidence of third-party use in view of these considerations.

As to the additional words in the cited registration:

[T]he Board found ... that ML is likely to be perceived as a shortened version of ML MARK LEES when used on the same or closely related skin care products. The Board thus recognized that these initials comprise a dominant feature of the registered mark, and that a newcomer’s use of the same initials, in connection with the same goods, would likely lead consumers to view the goods as coming from the same source. Avoidance of this kind of confusion about the provenance of goods is the very problem to which the Lanham Act was directed.

Other factors (the similarity of the goods, the overlap in channels of trade, and the non-sophistication of consumers) supported the Board's conclusion that confusion is likely.

And so the CAFC affirmed.

Text Copyright John L. Welch 2010.