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 In re The Ledes Group Inc., Serial No. 85002861 (April 18, 2012) [not precedential]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.