Friday, January 24, 2014

Test Your TTAB Judge-Ability: Is HAUTE MESS for Hair Products Confusable with HOT MESS for Sun Tan Products?

Applicant Product Innovations Research LLC sought to register the mark HAUTE MESS for various hair care products, but the PTO refused registration, finding the mark likely to cause confusion with the registered mark HOT MESS for various sun tan products. Applicant appealed. How do you think this mess came out? In re Product Innovations Research LLC, Serial No. 77912065 (January 22, 2014) [not precedential].


Third-party website evidence showed that consumers may see the involved goods offered under the same trademark, and several third-party registrations included both types of goods. Online stores sell both types of products, and so the Board concluded that the channels of trade and classes of consumers overlap. The Board found that these duPont factors favored a finding of likely confusion.

As to the marks, the Examining Attorney argued that HAUTE MESS and HOT MESS are phonetically similar, since HAUTE is often mispronounced as HOT. Applicant argued that the terms have "verifiable pronunciations that are demonstrably different from each other." The Board recognized that the marks sound different when pronounced correctly, but the record "does support a finding that despite the verifiable pronunciation, potential customers may still pronounce HUATE as HOT."

Nonetheless, the Board found the elements of meaning and commercial impression to be pivotal. There was no dispute that HOT MESS is a "well-known expression referring to a certain state [of] appearance or behavior." In contrast, HAUTE means "fashionable or high-class as in HAUTE COUTURE."

The obvious double entendre in applicant’s mark creates a very different meaning and humorous play on words wholly absent from registrant’s mark. In addition, registrant’s mark HOT MESS used in connection with its skin care creams directed to tanning and sun protection evokes the literal meaning of HOT (sun) and MESS (creams), or, as applicant states, "draws associations to the heat of the sun or a tanning lamp" (App. Br. p. 7) -- meanings that are wholly absent from applicant’s mark used in connection with the hair care products. While both marks may reference the slang meaning of HOT MESS, in the context of their respective goods, the shared phrase has a very different commercial impression due to each of their separate and distinct secondary meanings.

Thus considering each mark in the context of its goods, the Board found confusion not likely, and it reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Did you mess up?

Text Copyright John L. Welch 2014.

8 Comments:

At 5:41 PM, Anonymous Anonymous said...

The Board messed this one up badly. HOT and HAUTE have the same sound to me and most Americans. They are phonetically identical.

What if I told someone to bring me home some HOT MESS shampoo but they brought me HAUTE MESS instead because they are pronounced the same?

I'm very surprised by this one. I would have even considered it a WYHA.

 
At 1:27 AM, Blogger Frantzley Oriol said...

I have to side with the board in this situation. I think the likelihood of confusion in this situation is quite minimal.The two word marks in my opinion are only confusable in sound. And even the sound can be differentiated. I doubt that those attempting to register haute mess want it to sound just like hot mess. So it would be easy for the Haute Mess owner to fix the sound alike problem during the marketing of the brand. Making sure that in all advertising they sound the "haute" like it would be pronounced in french. There doesn't seem to be enough here to refuse to register the Haute mess Mark

 
At 12:45 PM, Anonymous Anonymous said...

Agreed with Frantzley. I could be wrong, but I'm not aware of any interpretation of the pronunciation of "haute" that says "hot" is acceptable. As the Board pointed out, the meaning employs a double entendre that's totally absent in the cited registration.

 
At 9:26 AM, Anonymous Anonymous said...

I don't understand how anyone would say that these marks are not meant to be phonetically identical. "HAUTE MESS" is obviously TRYING to sound like "HOT MESS". And being phonetically identical is as valid as anything in a likelihood of confusion analysis.

 
At 8:57 PM, Anonymous sahar said...

the availability test is whether the mark is similar in either sight, sound and meaning to another mark which could cause confusion to consumers.
the sight or appearance of HOT and HAUTE are different.
also the meanings are different. the debatable part is their pronunciation. although a fast speaker may pronounce hot and haute the same but in reality they do not have same pronunciation. in order to prove the sound similarity we should consider the correct and real pronunciation of the words. in addition the marks are not used for related goods so the likelihood of confusion would be slight.
here there would be some arguments that the consumer confusion is important not what is phonetically correct and the purchasers of these products are not sophisticated to search about the marks; but courts' tendency is the similarity in correct pronunciation and i think this is the rational way.

 
At 1:19 PM, Anonymous Rawan.B said...

Yes the pronunciation may seem identical for some people, but many others pronounce it differently. Not all consumers native English speakers who would pronounce HAUTE as HOT, in this case the marks will differ in pronunciation, and then it will depend on "the Haute Mess owner to fix the sound alike problem during the marketing of the brand" as Frantzley said.
Let's not also forget about the meaning of the marks. When hearing HOT MESS sun tan products, it would draws attention to the heat of the sun. Whereas hearing HAUTE MESS hair care products, would open consumers' imaginations to picture a high quality hair mess, which does not exist, and it is also the opposite of what the products do, this what makes it different and distinctive from registrant's mark. As the board stated that This factor alone outweighs the other factors, and will allow the owner of HAUTE MESS to register and receive the protection needed.

 
At 5:52 PM, Anonymous Anonymous said...

thouIn regards to the similarities between the marks, the board considered whether, in their entireties, if the marks shared a similar sound, meaning, and appearance. The board concluded that if pronounced properly HAUTE and HOT are different and that there is a difference in meanings in relation to the goods. I, however, do not agree and believe that there is still a strong likelihood to cause confusion with consumers. Although the applicant presented evidence that distinguished the meaning between HAUTE and HOT, I believe that the board should have put more consideration into the fact that there may be a likelihood that relevant consumers would mispronounce HAUTE, thus resulting in a strong sound similarity between the two words. I am not convinced that even with a difference in meanings there will be less confusion between the marks, especially since the products are complementary of one another. Relevant consumers are still likely to mispronounce HAUTE and associate one mark with the other. The applicant would have a stronger argument if they could prove otherwise through a consumer survey. The consumer survey will allow us to determine whether consumers would associate the products with one another and whether they recognize the different connotations between the two marks. I am not completely persuaded by the board’s decision and would like to see additional evidence in defense of it.

 
At 4:18 PM, Anonymous Libbie R. said...

Although I am not entirely persuaded by the Board’s analysis regarding the likelihood of confusion in In re Product Innovations Research LLC, Serial No. 77912065 (January 22, 2014) [not precedential], I do find their decision convincing because of the Board’s reference to cases where “… even the use of an identical mark is not likely to cause confusion if, because of the goods or services involved, the marks convey different meanings.”

Thus, even if HAUTE MESS and HOT MESS sound the same if HAUTE is mispronounced as HOT, I agree that the marks convey different meanings because of the type of goods offered. However, early in the Board’s opinion, they found the goods to be related. Therefore, it would have been helpful if the Board reconciled their finding that HAUTE MESS and HOT MESS goods are related with the holding from those cases where identical marks were permissible by expanding their analysis.

Nevertheless, on the point of consumer confusion and product relatedness, it would be difficult to imagine going to the store for shampoo and accidentally purchasing sun tan lotion because one was confused by the brand name or mark…

 

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