Thursday, April 19, 2012

Test Your TTAB Judge-Ability: Is Confusion Likely Between COSMETIC WORLD for Industry Newsletter and for Retail Store Services?

Applicant Ledes Group sought to register the mark COSMETIC WORLD for a "newsletter about the cosmetic and beauty industry, and directed solely to those who work or operate in those industries." The PTO found the mark confusingly similar to the identical mark registered for "retail store services in the field of perfumery, cosmetic products, beauty products and hair products." Remembering that when the involved marks are identical, a lesser degree of similarity between the goods/services is required to support a Section 2(d) refusal, how would you rule on the appeal? In re The Ledes Group Inc., Serial No. 85002861 (April 18, 2012) [not precedential]

Applicant won an initial skirmish over certain evidence that it filed with its brief on appeal. The Board agreed with Applicant that it could submit certain newsletters belatedly in order to provide "context" for purported "newsletters" that the Examining Attorney had relied on.

As to the relatedness of the involved goods and services, the Examining Attorney pointed to three third-party registrations that cover retail store, mail order, door-to-door, and home party cosmetic services, and brochures, pamphlets, and catalogs for cosmetics. The Board observed, however, that those types of materials "bear little resemblance" to Applicant's industry-targeted newsletters, since they are not intended for members of the general public. The Board therefore found that the channels of trade do not overlap.

Applicant urged that its customers are sophisticated, and would not be confused. The Board agreed. Applicant's customers would be smarter that the average consumer and would not be confused by advertisements "blasted from a national retail firm" or by written materials handed out at a home party or via door-to-door sales.

The Board deemed this sophistication factor to be "critical" in its finding that confusion is not likely.

TTABlog comment: I wonder whether everyone in the cosmetics industry is that sophisticated? I mean, when I wander through the Prudential Mall and glance into the big cosmetics store, I don't see many rocket scientists, you know what I mean?

Text Copyright John L. Welch 2012.


At 12:02 PM, Anonymous Joshua Jarvis said...

Applicant seems to have presented little evidence regarding the actual nature -- and purported sophistication -- of its customers. The limitation in the services ID -- "those who work or operate in [the cosmetic and beauty] industries" -- does not suggest sophistication, and necessarily includes those who work for cosmetic and beauty retail stores, who are surely consumers of cosmetics as well, so there's pretty clear overlap here.

The Board appears to have conflated "knowing the difference between an advertisement for retail services and an industry newsletter" with "customer sophistication," which seems a bit of a stretch. I think the Board gets to the right result here, but this particular analysis seems a bit thin.

At 1:57 PM, Anonymous Anonymous said...

Joshua reiterated the very sentiments I logged in to express.

The decision highlights the Board incomprehensible use of the proposition that "expertise of purchasers does not assure absence of confusion" versus "the level of purchaser sophistication is an important consideration in determining whether confusion is likely."

The Board also highlighted that the application states, "directed solely to those who work or operate in those industries," but there is no limitation in the cited registration. What happened to making decisions based on the descriptions? Perhaps the retail is solely for those who work in the industry and certainly those who work in the industry are not barred from shopping in this retail location.

Overall, the decision seems correct but the logic, reference to precedents, and explanation are wholly inadequate. At times, the Board should simply dispense with the opinion and simply say "affirm" and "reverse" as everything they write is superfluous and non-insightful.

At 2:37 PM, Anonymous Reid said...

Are the MIT rocket scientists adverse to crossing the Charles?

At 3:30 PM, Blogger John L. Welch said...

I believe that in most case, the sophistication argument is a make-weight, thrown onto the side of the scale that suits the Board's view of the case. The Board could have said, as if often does, that "even sophisticated purchasers may be confused when dealing with identical marks," or that "just because the purchaser is sophisticated as to cosmetics does not mean that he or she is sophisticated as to trademarks."

At 8:07 PM, Anonymous Anonymous said...

How can you tell by looking whether a woman is a rocket scientist?

At 8:56 PM, Anonymous Anonymous said...

Generally I find your blog informative and your comments witty and thought provoking but not today. You said "when I wander through the Prudential Mall and glance into the big cosmetics store, I don't see many rocket scientists, you know what I mean?". Can you please explain? Exactly what does a rocket scientist look like?

At 9:53 PM, Blogger John L. Welch said...

Who said there were only women in the cosmetics store?

At 10:08 PM, Anonymous Anonymous said...

Sounds like back peddling, Welch. Women who care about their appearances (or maybe need a good eye gel after long days in the lab designing rockets) - don't look "intelligent" to you for some reason. Interesting!

At 7:18 AM, Blogger John L. Welch said...

Based on my viewing of many science fiction movies, I believe a rocket scientist would be wearing horned-rim glasses, carry a clipboard, and have a pencil behind one of his or her ears or in his or her hands.

At 8:31 AM, Blogger John L. Welch said...

Note that I was referring to the men and women who work in the cosmetics store, not the customers. So rocket scientists who buy cosmetics are irrelevant to the point I was trying to make.

At 5:38 PM, Anonymous Rob said...

Looks like you were caught red-handed by the PC thought police, John. Happens to the best of us. And I agree completely that the sophistication issue is usually decided in an arbitrary and capricious manner.


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