Test Your TTAB Judge-Ability: Are STRIPT WAX BAR and THE WAX BAR Confusable for Body Waxing Services?
Applicant sought to register the mark STRIPT WAX BAR & Design for "body waxing services for the human body" [WAX BAR disclaimed], but Examining Attorney John Kelly issued a Section 2(d) refusal in view of the registered mark THE WAX BAR for "body waxing services." Applicant argued that the common element "wax bar" is descriptive, or at least highly suggestive, of the services, and therefore the focus should be on the other elements of its mark. How do you think this came out? In re Stript Wax Bar, LLC, Serial No. 77706198 (November 16, 2012) [not precedential].
In comparing the marks the Board noted that, under the CAFC's ruling in Citigroup, Inc. v. Capital City Bank, it must consider that the registered standard-character mark may be displayed in the same "saloon-style" font as the applied-for mark.
The Board also pointed to the line of cases saying that when a proposed mark incorporates the entirety of a cited mark, the additional matter will not necessarily suffice to distinguish the marks. On the other hand, another line of cases holds that when the common or appropriated matter is highly suggestive or merely descriptive, or is frequently used or registered by others in the field, the addition of a house mark or other matter may serve to distinguish the marks. For example, ZU ELEMENTS in stylized form was found to be not confusingly similar to ELEMENTS for clothing products; ESSENTIALS was deemed not confusingly similar to NORTON MCNAUGHTON ESSENTIALS for clothing items.
Here, however, the Board was not persuaded that WAX BAR possessed the degree of suggestiveness or significance to fall within the latter line of cases. Applicant's evidence "merely" showed eleven different websites referencing marks containing WAX BAR used in connection with body waxing services. However, at least three of them used THE WAX BAR, and may be associated with Registrant. In Knight Textile [the ESSENTIALS case], the Board relied on 23 third-party registrations for marks containing the word ESSENTIALS for clothing products.
With regard to the addition of the word STRIPT, consumers may believe this is a house mark "that simply identifies what had previously been an anonymous source for Applicant's services."
Resolving any doubt in favor of the registrant, the Board found confusion likely, and it affirmed the refusal.
TTABlog note: Applicant was not required by the PTO to disclaim WAX BAR, but only WAX. Apparently it chose to disclaim the two-word term in order to be consistent with its argument that the cited mark is descriptive.
Text Copyright John L. Welch 2012.