TTAB TEST: Are Bath Salts and Customer Loyalty Programs Related for Section 2(d) Purposes?

Anthropologie and Urban Outfitters opposed an application to register the mark ANTHO in the form shown here, for bath salts, baths soaps, cosmetics, and other personal products, claiming a likelihood of confusion with the common law mark ANTHRO for a customer loyalty program rendered in conjunction with opposers' retail store and Internet services featuring beauty and cosmetic products. The Board, not surprisingly, found the marks to be very similar in sound, appearance, and overall commercial impression. But are the services and goods related? Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC, Opposition No. 91204412 (October 21, 2014) [not precedential].

Opposers contendedt that "Anthro" is used by its customers as a nickname or abbreviation for the store, Anthropologie, and as a reference to opposers' goods (clothing) or services, but the Board was not impressed. Although on rare occasion the Board has stated that even if a company has not itself used a term as a trademark, it still may have a protectable property right in the term [think IBM and BIG BLUE] if the public has come to associate the term with the company or its goods and services.

However, the use by the public of a term to refer to a company and/or its products or services does not mean that the company has obtained rights to exclude others from using the same term for [every] product or service, and it certainly does not mean that the company has obtained rights to register the term as a mark for [every] product or service.

Here, the evidence did not show that opposers sell beauty and cosmetic products under the ANTHROPOLOGIE mark. In short, Opposers failed to establish rights in the word ANTHRO for anything other than their customer loyalty program services.

However, the Board found that Opposer's loyalty program services, rendered in connection with their retail and Internet services featuring beauty and cosmetic products (under third-party marks) "are similar to" Applicant's personal care products. Noting that "it is well recognized" that when the same mark or similar marks are used for goods and for retail services featuring those goods, confusion is likely, the Board concluded that this du Pont factor favored opposers.

Furthermore the involved goods and services are offered through the same type of trade channels, and the purchasers would overlap. The goods and services are subject to "impulse purchase." [Loyalty programs are subject to impulse purchase? - ed.]. And Opposers "have enjoyed success with their loyalty program services under the mark ANTHRO." [So that means it's a strong mark? Or is it just a good program? - ed.]. The record was devoid of any third-party use of the same or similar marks.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

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Text Copyright John L. Welch 2014.