Tuesday, April 03, 2012

Test Your TTAB Judge-Ability: Is TEMPEST for Perfume Confusingly Similar to TEMPEST for Indoor Tanning Preparations?

The PTO refused registration of the mark TEMPEST for "perfumery, namely, perfume, perfumed soaps, eau de toilette, perfumed body wash, and perfumed shower gel," on the ground of likely confusion with the identical mark registered for "indoor tanning preparations." Are the goods close enough to support the refusal? Did Applicant weather the storm? How would you rule? In re Coty US LLC, Serial No. 77631330 (March 29, 2012) [not precedential].

Applicant Coty argued that its goods are distinctly different from the "very narrow set of goods" of the cited registration. The examining attorney, relying on third-party registration evidence, contended that the goods are similar because they both “fall under the category of cosmetics” and involve potentially overlapping clients or markets.

On close inspection, the Board found that the third-party registrations "cover goods that are distinctly different from (or not sufficiently clear that they are the same as) those at issue in this case."

For example, none of the identifications in the third-party registrations contains the clear limitation present in applicant’s identification of “indoor” tanning preparations or even “tanning preparations” generally. A number mention “sun tanning preparations,” but the identification in the cited registration is clearly not intended to included “preparations” for “tanning” in the “sun.” Moreover, there is no evidence in the record that otherwise establishes that “indoor tanning preparations” are a similar category of goods to those identified in the application or that they involve similar classes of consumers or channels of trade.

Moreover, the examining attorney conceded that the “indoor tanning preparations” of the cited registration are directed toward sophisticated professionals. [Do the "sophisticated professionals" who work at tanning salons not also buy perfumed products? - ed.].

The Board found confusion unlikely, and so it reversed the refusal:

While the marks are legally identical, the examining attorney has not carried his burden of showing a viable relationship between applicant’s identified goods and the goods in the cited registration, or that they would travel in the same or similar channels of trade. We further find that the consumers of registrant’s goods are likely to be sophisticated professionals. We therefore conclude that confusion is not likely.

Text Copyright John L. Welch 2012.


At 11:28 AM, Anonymous Anonymous said...

This does not make sense to me. The goods do not have to be identical or directly competitive to find a likelihood of confusion.

So does it really make a difference that the cited mark was for "indoor" suntanning lotion as opposed to just regular "suntan lotion"?

The Applicant's goods were "cleaned up" during the application process to distinguish them by deleting goods such as "creams and lotions."

I always find that interesting when goods are deleted and the Applicant now argues the goods are distinguishable. Does the Board really have to close their eyes to this fact?

Is there an Opposition coming? I am guessing yes. We shall see.


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