TTAB Test: Is Buttock-Lifting Underwear Related to Breast-Lifting Tape, for Section 2(d) Purposes?

The USPTO refused registration of the mark PICK ME UP for "Bodyshaping undergarment clothing worn over the buttock that lifts the buttocks without padding," finding it likely to cause confusion with the registered mark PICK-ME-UP for "body tape in the nature of a bra consisting of breathable fabric backed with an adhesive layer for enhancing body contour by lifting the breasts." Applicant argued that the involved goods "not only are structurally different but use different means to achieve their objective and are offered to the marketplace for entirely different purposes." How do you think this came out? In re Sweet and Vicious, LLC, Serial No. 86636337 (November 1, 2016) [not precedential].

Of course, the marks are nearly identical. That factor "strongly favored" a finding of likelihood of confusion.

Applicant contended that the phrase PICK ME UP is entitled only to limited protection in view of three applications and 11 registrations for closely similar marks. The Board pooh-poohed the applications because they have no evidentiary value other than to show that they were filed. As to the registrations, they merited little weight on the issue of marketplace strength. Moreover, ten of the registrations were for articles of clothing, while the eleventh mark was significantly different from the marks involved here. And even if the cited mark was weak, it is still entitled to protection against registration of a similar mark for related goods or services.

Turning to the issues of the similarity of the goods, channels of trade, and classes of consumers, the goods of the parties are undergarments used to shape portions of the body. Applicant's own website offers "breast lift tape," "butt bras," and "butt lifters." Registrant's website offers both "rear-enhancing padded briefs" and "breast tape." Similarly, a third-party website offers "adhesive breast lifts and tape" and "butt lifter body shapers."

Applicant's argument that the involved goods are not related due to their structural differences and their differing purposes was unpersuasive. Goods need not be identical or even competitive to be related for Section 2(d) purpose; they need only be related in some manner surrounding their marketing that they could give rise to source confusion.

Since the purpose of both Applicant’s and Registrant’s goods is to shape parts of the body and the goods are sold on the same websites in proximity to each other, use of similar (or as in this case, virtually identical) marks could give rise to the mistaken belief that the goods emanate from the same source.

This same evidence also established that the goods are sold in the same channels of trade to the same customers (on-line websites selling shapewear clothing to women).

And so the Board found confusion likely, and it affirmed the refusal.

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TTABlog comment: I found this opinion somewhat uplifting. How about you?

Text Copyright John L. Welch 2016.