Thursday, September 20, 2012

TTAB Reverses 2(d) Refusal of "PERFUME PARIS & Design" Over "PARIS PERFUMES & Design"

The sophistication of the relevant public and the differences in the marks led the Board to reverse a Section 2(d) refusal of the mark PERFUME PARIS & Design, shown below left, for "retail store services featuring perfume" [PERFUME and PARIS disclaimed]. The Board found the mark not likely to cause confusion with the registered mark PARIS PERFUMES & Design, shown below right, for "distributorship services in the field of perfumes" [PERFUMES disclaimed]. In re Sanyet Ferdinand, Serial No. 77965837 (September 7, 2012) [not precedential].

Third-party registration evidence submitted by the Examining Attorney missed the mark. It showed that many marks have been registered for both retail and distributorship services, but almost none in the field of perfume. In short, the evidence that companies offer both types of services in the perfume field was "very limited."

As to the channels of trade the Board concluded, based primarily on dictionary definitions, that distributorship services are not rendered to the public at large. "Thus, retailers or others in the trade are the only entities that would be aware of or who could encounter" both Applicant's and Registrant's services.

Those in the perfume trade, whether distributors or retail store operators, must be treated as sophisticated and careful purchasers, and thus would be aware of trademarks and likely to notice differences between them.

Turning to the marks, because the words in Applicant's mark are disclaimed (one being generic, the other geographically descriptive), they are entitled to less weight in the analysis. Although the word portion of a word-and-design mark is usually given greater weight, that is not the case here.

The Board reached the same conclusion as to the cited mark. PARIS describes the geographic origin of the perfumes, and PERFUMES is generic and disclaimed. Although the cited registration issued under Section 2(f) as to those words, the acquired distinctiveness "must be recognized to derive from the registrant's use of the mark as a whole, and the conclusion of acquired distinctiveness is to the stylized manner in which the words are depicted, and not to the words per se."

When the marks are compared in their entireties, with appropriate weight given to the dominant portions, "it is clear that the design portions of the respective marks are quite different in appearance and significance." Moreover, the words appear in different order, with the cited mark emphasizing the word PARIS. Assuming the Applicant's mark would be pronounced PERFUME PARIS, the odd syntax creates a somewhat different impression from PARIS PERFUMES.

The only similarity between the marks is the inclusion of the words PARIS and PERFUME(S). Those common elements were not sufficient for the Board to find the marks confusingly similar. The sophisticated purchasers who would be the only overlapping customers for the involved services would not assume, based on these common elements, that the services emanate from the same source. Factoring in the limited scope of protection to which the registered mark is entitled, the Board found that the PTO had failed to establish a likelihood of confusion.

Text Copyright John L. Welch 2012.


At 10:35 AM, Anonymous Anonymous said...

This was a well reasoned decision and should be citable. I tire of the usual superficial decisions by the Board glossing over weakness of the mark and giving disclaimed elements too much weight in its likelihood of confusion analysis. I also thought the comparison of distributorship and retail was well reasoned unlike its recent decision that because two items are found in the same magazine or magazine cover (was it skiing and cigars?), consumers can be confused as to the source.

The irony here is that if the applicant failed in its appeal, I suspect that it would have been categorized as a WHYA.


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